Protecting Trade Secrets: Best Practices for Remote Workers

Protecting Trade Secrets: Best Practices for Remote Workers

Remote working hit like a storm in March. We expected the “weather” to calm down by the summer. It didn't. Now it’s November, with no end to the remote working season in sight. Remote work was a short-term solution to what people believed was a short-term problem, and would correct itself once the COVID-19 curve flattened. Now, cases are on the rise again and remote working seems here for the long-term.  More and more companies are accepting the reality of the situation, and this has turned much of the nation's labor force into a remote workforce that gets larger every day. With this sudden change in how we live and work in the same location comes a variety of problems for today's employers and remote workers. How does an employer keep their work information safe and separate from their employees’ home lives?

Remote working situations can threaten trade secret protection at every level of any organization. Implementing best practices to protect your company’s valuable trade secrets and confidential information is critical… and easier than you may think.

What is Considered a Trade Secret?

Trade secrets can be anything a company considers confidential information and important to its business:  scientific or technical information, designs, processes, procedures, formulas, improvements, confidential financial information, customer lists, distribution, and supply chain information.  

Basically, a trade secret is any information from which a company derives value that is not generally known and the owner takes affirmative, reasonable measures to keep it secret. Some examples of such measures can include limiting access to servers where the information resides and requiring passwords to access information or documents.

Keeping Trade Secrets “Secret”

With so many remote workers, the potential for exposing trade secrets increases. In order to ensure that confidential information is considered a trade secret, a company needs to take reasonable measures to protect them. Ways to minimize this exposure include: providing training and guidance to employees regarding handling confidential information, mandate that employees use work-issued hardware, and updating NDAs and confidentiality agreements. 

Provide Training and Guidance

One of the most important things a company can do is provide training and guidance to their employees in remote training sessions to refresh knowledge around the types of information the company considers to be a trade secret and the policies and procedures in place to protect it. Training sessions should include specific guidance for handling trade secret information in home environments, which are less controlled than in-office situations.

Work-Issued Hardware and Technology Basics

Issuing hardware such as laptops or other devices makes it easier for companies to set up secure remote environments, monitor and control employee access to trade secret information, control outside connections, and prevent employees from downloading files that may compromise the security of the device. Companies should ensure that their employees are accessing company systems through a secure VPN, consider encrypting files that contain trade secret information, and employ document management systems that can require passwords to access sensitive documents and track user access and downloads.

Updating NDAs and Confidentiality Agreements

Employers should update — or implement if they are not already in place — confidentiality agreements and NDAs to reflect the policies and procedures for protecting trade secret information in remote environments.  

Updating Phishing and Spam Protocols

Companies are seeing an uptick in phishing and spam emails since the pandemic began, and many of these emails are sophisticated spoofs of regular corporate communications. Employees should be reminded regularly to look at emails critically and carefully before opening or forwarding, and not to click on unknown links.  

Passwords for Zoom Meetings

Passwords and “waiting room” access should be enabled on all conferences utilizing Zoom or other video conferencing platforms, particularly when confidential company information is being discussed. With those settings, only attendees with the passwords are allowed into the “waiting room,” and the conference host must individually allow each attendee into the meeting, reducing the possibility of unauthorized eavesdroppers.

Printing Policies

Companies should consider implementing restrictions on printing documents at home that contain trade secret information. In an office environment, printing can be more controlled and only company employees have access to copies. When working remotely, printing documents becomes more hazardous — many people in a household are likely working or schooling remotely and sharing a single printer, which increases the likelihood that another household member could mistakenly pull sensitive company information off a printer and read it, misplace it, or inadvertently disclose it to others. 

Clean Desk Policy

Many companies are implementing a “clean desk” policy, which is exactly what it sounds like: leaving nothing on your desk when you leave it unattended. Companies may require employees to put any trade secret information into a locked drawer or safe when not working on it.  

Take Reasonable Measures to Protect Trade Secrets

Nobody knows when the COVID-19 pandemic will end — but now that companies have seen that their workforce can efficiently and effectively work remotely, remote work is likely to stick around as a lasting change to the business environment. If they haven’t already, companies should establish reasonable measures to protect their trade secrets in this new paradigm. If a company is not implementing measures to protect its trade secret information, it could lose protection as a trade secret and, worst of all, irreparably damage the company.  Take steps to ensure your remote workers are keeping your trade secrets secure — and secret.

Tiffany-style ring

Back in the Fighting Ring: Tiffany & Co. vs. Costco

Have you ever seen a Labor Day sale at Tiffany & Co.?  A discount code?  A coupon?  Imagine the surprise when it appeared that Tiffany & Co. was selling its diamond engagement rings at Costco. 

In late 2012, a surprised customer contacted Tiffany & Co.wondering why the exclusive, high-end jewelry retailer had started selling their rings at warehouse retailer, Costco, better known for bulk discount purchases. Was it a counterfeit? Was it real? Why was Tiffany discounting its high-end jewelry?

Tiffany wondered the same thing and immediately commenced an investigation.  Tiffany discovered that Costco had been selling diamond solitaire rings in a six-pronged setting and labeling them as “Tiffany” rings. 

They were not Tiffany’s rings.

It's not unusual for Costco to sell branded jewelry in their stores. Costco has had partnerships with Cartier and other higher-end jewelry and watch companies. However, Tiffany has a reputation for having a fixed direct-to-consumer channel. Part of Tiffany’s brand identity is that it is a luxurious and exclusive jeweler, and could never be purchased through a warehouse retailer. 

Tiffany & Co. commenced a trademark infringement and counterfeiting suit against Costco in the Southern District of New York. Costco filed a counterclaim, arguing that the word “Tiffany” had become generic for a particular style of setting: the six-pronged diamond solitaire setting. Costco said that “Tiffany-style” was being used to identify that specific setting throughout the jewelry industry, so “Tiffany” was no longer a brand name. According to Costco, because the term is generic, it was using “Tiffany” in a descriptive sense – not claiming that the rings it sold were Tiffany-branded rings.

After a few years of hotly contested litigation and a ruling that Costco had infringed, in August of 2017, the judge ruled that Costco must pay $19 million to Tiffany & Co. -- an amount three times the $3.7 million in profits that Costco made from selling the infringing rings, plus $8.25 million in punitive damages under the counterfeiting statute.  The judge also ruled that Costco was on the hook for Tiffany’s legal expenses, bringing the total amount assessed against Costco to more than $25 million.  Costco appealed the ruling and the damages award, which will be ruled on later this year.

Could “Tiffany” Be Generic?

A trademark or brand name indeed can become generic through widespread use.  There are many examples, including aspirin (originally owned by Bayer, but generic in the U.S.), flip phone (originally owned by Motorola), escalator (originally owned by the Otis Elevator Company), and teleprompter (originally owned by the TelePrompTer Corp.).  Trademark policing is critical when a trademark or brand name becomes widely used. For example, the word “Kleenex” has become so widely used for tissues in the United States that someone may say, "Would you hand me a Kleenex?" or "can you pick up Kleenex at the store?" when what they really mean is a Kleenex brand tissue.   

Xerox has run advertising campaigns over the years to bring awareness to their trademark rights and to try to avoid “genericide.”  In the campaigns, Xerox encourages people to use the word “Xerox” as an adjective (“Xerox copier”), never as a verb (replacement for “to copy”) or as a noun (replacement for “copies”).   

Tiffany has argued that Costco has presented “no proof that ‘Tiffany’... is generic,” nor did Costco show that using the word Tiffany was “the only way to identify this particular ring style.”

If the Second Circuit determines on appeal that the term is generic and Costco fairly used it to describe its ring style, it could have far-ranging implications for the Tiffany brand.

Related: Beyoncé, Blue Ivy, and the Kardashians: The (Big) Business of Trademarks

Did Costco Sell Counterfeit Rings?

Costco claimed that they just used the word “Tiffany” on the placard to denote a Tiffany-style ring. The rings themselves were not stamped with “Tiffany,” and they were not sold in a Tiffany blue box. In fact, the rings sold at Costco were stamped with the name of the actual manufacturer and sold in a brown box. 

The judge called Costco's attitude towards the Tiffany brand “cavalier.” Costo presented the word “Tiffany” on the placard, not “Tiffany-style,” and didn't try to present the ring as anything other than a Tiffany product.  The judge also found it suspicious that Costco didn't sell their “Tiffany” rings online:  they were only available in-store, so the only way Tiffany found out about the use was through a customer inquiry.

If the Second Circuit determines on appeal that Costco did not engage in counterfeiting, the damages award assessed against Costco will be dramatically reduced.  

I’m keeping my eyes on this case. It will be interesting to see what the Second Circuit decides, and I’ll keep you updated.

TikTok, TickTock - Can You Claim Copyright on a Dance Move?

TikTok is the lockdown app of the moment, with user numbers surging during COVID-19 social distancing restrictions. In what seems like just a few months, the app has gone from being a new fad to a lockdown essential with everyone from Justin Beiber to the local police department getting in on the act. While everyone is uploading dance videos and cute pet videos, the platform does not come without its copyright problems.  

TikTok has given everyone a creative platform to share their video content publicly, whether that be a dance, a funny cat video, or a joke. TikTok users upload a video to their account, and share it with their followers, who copy, share, reuse, and repost it to millions in just minutes. If an influencer with millions of followers picks up your content, it is likely to go viral and gain you thousands of followers - if you are credited. 

However, what if you are not?

Often, influencers that copy content such as a dance move and redo it themselves, or share the piece to their followers, receive the credit for the content created. The Renegade, the world’s hottest dance move so far in 2020, is a great example. The dance, created by 14-year-old Jalaiah Harmon and her friend in September 2019, went viral. They only had a few thousand followers on TikTok. The dance was picked up by a dancer with 200,000 TikTok followers; it was then copied and shared by the Kardashians, Lizzo, and YouTuber David Dobrik, who made it go viral. None of them credited Harmon. This led to a global outcry, and those influencers were publicly slammed for not crediting Harmon.

There was a similar issue in 2018, with a series of lawsuits against Epic, the creator of the video game Fortnite.  Artists who had created dance moves like the “Floss” and the “Carlton” sued Epic for copyright infringement because the company picked dance moves and embedded them into Fortnite. Players could buy the dance moves and have their avatars express the dances in the middle of the game. Fresh Prince of Bel Air actor Alfonso Ribeiro, who created the Carlton dance move (known on Fortnite as the “Fresh”), actually applied to register copyright for the Carlton. However, he was rejected under the Copyright Act standards that social dance moves are not copyright-eligible. Even the creator of the 26-pose flow for Bikram yoga, Bikram Choudhury, was not able to register a copyright on his series of movements.

Related: Can You Own a Meme?

Copyright Act

It can be nearly impossible to ensure that the original creator of a dance move is getting credit for their work and even harder for them to protect their content. It was not until the Copyright Act of 1978 that choreography became copyright-eligible work. However, the protection added for choreography was limited in scope. Short series’ of dance moves, known as ‘social dances,” are not protectable. Copyright protection for dance is only available for longer, choreographed pieces. According to the 1978 Copyright Act: ‘Choreography is the composition and arrangement of a related series of dance movements and patterns organized into a coherent whole… Choreography and pantomimes consisting of ordinary motor activities, social dances, commonplace movements or gestures, or athletic movements may lack a sufficient amount of authorship to qualify for copyright protection.’ To paraphrase, the Copyright Act will protect a full-length ballet, or an Alvin Ailey performance, but will not protect a dance composed of a few basic human movements pieced together for a few seconds, such as our Renegade example. 

To put it in context, trying to copyright the Renegade or the Carlton, or even yoga poses, would be similar to trying to copyright a few common words strung together vs. a sentence, chapter, or an entire book. For example, writing “it was the best,” is not necessarily a copyright-eligible literary or dramatic work, but “it was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness…” would certainly be copyright-eligible (if A Tale of Two Cities were not already in the public domain).  Permitting a few words or dance moves to be copyright-eligible could create a legal morass and an enforcement nightmare.  Can you imagine if the creator of the Dab had been able to copyright the move? YouTube embeds copyright tools into its algorithms, so when people post YouTube videos that have copyrighted music playing in the background, YouTube can remove those videos. If dance moves were copyright-eligible, YouTube would have to create a motion recognition algorithm to take down anything that has a Dab in it, which would be verging on impossible. I cannot even imagine how much of the content on YouTube has somebody Dabbing in it.

Related: Hashtags, Memes, and Emojis: The Landscape of #IP on Social Media

Taking Credit

Another challenge, particularly with the viral nature of social media content, is figuring out who first created the dance content -- the original “author” of the move. Because many dance moves end up in popular culture, it is difficult to say who first did them. Somebody may have seen a spontaneous dance move in a club and been inspired, then recreated it. It is so difficult to tell where some of these moves originated.

So, who owns a viral dance? Is there such a thing as ownership of something like that? For the Renegade, it is a little bit different because it was a series of several different moves that Harmon combined accompanied by a song. When you are talking about a simple dance move like the Dab or Running Man, it is more difficult to determine who created it first. “Ownership” can be difficult to fact-check in the social media world. Somebody may claim that they were the first person to make a move, but there is no real way of checking, especially on platforms like TikTok, where there is no creation timestamp. There is a difference between ownership and credit - ethically. You may not be able to prove that you are the original owner and the one who created the dance, but users should credit you when re-creating a move they saw you perform or sharing a video you created. 

Relying on Community Enforcement

Unlike a photograph, where the creator can embed watermarks or copyright restrictions into the metadata of the image, there is little to no technologically that a creator can implement to protect a social media video clip. So far, ownership or credit claims on TikTok have relied entirely on community enforcement. When somebody has co-opted or popularized somebody else's dance move and tries to take the credit for it, the comment section of that clip typically becomes a valuable source tracing method. People will go into the comments and publicly chastise the poster for trying to take credit for somebody else's work. It is a powerful example of how social media can police itself. The social media community itself can be a force for ethical enforcement, even if there is nothing the creator can do legally.

Interestingly, it seems that younger users of social media platforms have a different view of copyright protection for their content than the traditional paradigm.  Many creators love watching their content being popularized and going viral and it can boost their followers, too - when they are given credit. For the social media generation, it is often more about the ethics of crediting the original creator and less about enforcing their rights to take down the content. 

So, if you are going to share anything on social media, copy a dance move or a viral piece of content, make sure you credit back and tag the person who created it. It is just the right thing to do. 

What Shark Tank Can Teach You About IP Protection

Lessons from the Tank: What Shark Tank Can Teach You About IP Protection

It was the kind of public exposure that most entrepreneurs can only dream of. First, Emma Cohen's company, Final Straw, took off on Kickstarter, ultimately raising $1.6 million on the crowdfunding site. Then, she landed a coveted chance to present her reusable, collapsible straw on ABC's Shark Tank. Two groups of impressed Sharks made her an offer. 

That's when things started to go wrong. Very wrong.

Despite filing a provisional U.S. patent application, Cohen suddenly found cheap copycats of her straw being sold all over the world, most often on the site Worse still, Cohen was receiving complaints about the inferior knockoffs from customers who mistakenly believed they were buying her product. The problem was amplified by Instagram influencers, some of whom featured Cohen's name and product but linked to the copycat companies. 

Unfortunately, this is an all too common occurrence for entrepreneurs who publicly expose their unprotected intellectual property in order to secure coveted startup funding from shows like Shark Tank and sites like Kickstarter. 

The Dilemma for Entrepreneurs: Fund or Protect

The premise of Shark Tank and similar shows is that entrepreneurs, many of whom have invented new products, are allowed to present their business ideas to a group of successful investors, entrepreneurs, and private equity funders. If the investor likes the idea, they will offer the inventor or entrepreneur an investment in exchange for equity in the company. The entrepreneur can then opt to accept the offer or not. 

Related: Tips to Protect Your IP as a Small Business or Startup

Unfortunately for these inventors, the sharks are not the only ones who see the new invention. It airs for the entire world to see. Sometimes these inventions are patent-eligible. If they've chosen a name, there may be trademark issues involved, and if they have already created other content, like designs or marketing collateral, there may also be copyright issues. 

The Issue of Public Trademark Information

Sadly, the problem isn't limited to public exposure via Shark Tank or Kickstarter. Trademark applications are publicly available, and copycats, particularly in China, will troll these applications on the USPTO website.  Suddenly, entrepreneurs may see knockoffs of their products appearing on ecommerce sites like, or counterfeit trademark filings in foreign countries. 

Alibaba and other online sites have mechanisms for reporting and taking down knockoff products, but it can be a little like playing that arcade game “Whack-a-Mole.”  Just as one vendor is located and reported, it may pop up under a different name or a separate listing. It's an exhausting process to keep up with, and it can be challenging to protect an invention. 

Cohen employs a team of sixteen contractors, including three who focus solely on fraud. She also employs two full-time attorneys and has estimated that the cost of protecting her Final Straw company from knockoffs and fraud has exceeded $2 million. 

Sophistication and Fallout

These knockoffs and counterfeit sites are becoming increasingly sophisticated. The imposters may create domain names or URLs that, at first glance, appear to be legitimately connected to the actual product source or the company, but what they're actually selling are counterfeit products. They may even “scrape” content and logos from the original product website and use them to populate the counterfeit site.

People are often misled into believing they're buying an authentic product for a fraction of the price. Unfortunately, knockoffs are usually cheap in terms of quality. The product breaks and then the entrepreneur gets blamed for it because consumers don't necessarily realize that what they're buying is a fake product.

Why Paranoia Might be an Inventor’s Best Friend

The problem isn't just with Kickstarter or Shark Tank. Startup companies often create Instagram accounts and post sneak peeks of products that they're in the process of inventing or prototypes that they are developing. Social media is increasingly ubiquitous, and nobody really thinks about snapping a picture and throwing it up on Instagram to create product buzz. But once the post is public, assume it is permanent and can’t be removed.  Since the U.S. has switched to a first to file patent system, others may see these posts on social media and can file patent applications on the product -- even if they aren’t the entrepreneur who developed the initial prototype.

Before you take advantage of an opportunity such as Kickstarter or Shark Tank, or decide to promote your product publicly in any media, make IP protection a priority.  You absolutely have to have protections locked down before you make any kind of public disclosure about your product. That can include filing a provisional or full patent application for your product or obtaining copyright and trademark registrations. These moves can also help you secure funding. Many investors prefer to invest in an entrepreneur who has been thoughtful about protecting intellectual property. 

Related: Is Your Startup Making These Mistakes With Your IP?

Take Your Cue From Doc

Remember the film Back to the Future and Doc Brown, who had developed his time machine but was paranoid about anybody discovering it, keeping it under a tarp in his garage? Entrepreneurs should be equally paranoid about publicly disclosing or promoting their new invention -- no matter how proud they are of it. 

You have to assume, unfortunately, that there are bad actors out there monitoring sites and looking for a great idea they can steal. A little paranoia can go a long way and is probably an inventor's best friend today. 

Be more like Doc:  keep your invention under a tarp in the garage until it's safe to bring it out in the open.

Beyoncé, Blue Ivy, and the Kardashians: The (Big) Business of Trademarks

Beyoncé, Blue Ivy, and the Kardashians: The (Big) Business of Trademarks

Celebrity trademark registration is big business. Just ask the Kardashian family, who between them own nearly 700 marks for everything from children’s clothing, to cosmetics, to jewelry.

As influencers and personal branding become increasingly important in today’s media culture, a growing number of celebrities are responding by applying for trademarks to preserve the exclusive right to use their names in connection with goods and services. They’re also leveraging the trademark system to protect against the possible future use of their children’s names to promote goods or services.

In one example, just after their daughter was born in January 2012, Beyoncé and her husband Jay-Z filed an intent-to-use trademark application to register their daughter’s name, Blue Ivy Carter, in connection with a wide variety of goods and services including skin care products, keychains, phone cases, books, strollers, mugs, playing cards, and online video games.  (That particular application was abandoned, but re-filed in 2016.) The USPTO approved their application for BLUE IVY CARTER, but registration is opposed by the owner of a company called Blue Ivy, which holds a prior registration for BLUE IVY for wedding and event planning services and claims use of the mark as early as 2009, well before the birth of Blue Ivy Carter. The owner of Blue Ivy claims that use and registration of BLUE IVY CARTER for the identified goods and services will cause confusion with the BLUE IVY mark.  

Related: Did You Get Punk'd By a Trademark Spammer or Patent Troll? 

Blue Ivy also claims that Beyoncé and Jay-Z never intended to use BLUE IVY CARTER in connection with the identified goods and services, which is a requirement when filing an intent-to-use trademark application.  In the opposition proceeding, Blue Ivy pointed to interviews in which Jay-Z has stated that he was aware of people trying to make money off his daughter’s name, but he didn’t want anyone to benefit from her name.  The trademark system is not designed to prevent unauthorized use in this way. Trademarks exist to protect words or phrases that are or will actually be used in connection with goods and services, not to provide a monopoly on an identifier or phrase that is never going to be used commercially.  

So, the dispute over registration of BLUE IVY CARTER continues.

Beyoncé and Jay-Z are not the only celebrities using trademarks to protect their children’s names or the perceived economic value attached to those names. David and Victoria Beckham, for example, hold trademarks for their names and their children's names in the U.K. and Europe.  The Kardashian family, in particular, have been actively filing trademark applications, not only for their names and their children’s names, but also for variations of their children’s names. Even Meryl Streep, not as active as the Kardashians on social media, owns a trademark registration for MERYL STREEP issued in 2018 in connection with entertainment services like personal appearances and providing a website with motion picture content.

Related: Hashtags, Memes and Emojis: The Landscape of IP on Social Media 

Many celebrities see potential in personal branding and the value of their unique names, and see an opportunity to leverage the trademark system to capitalize on branding trends.  They may not know for certain that they want to pursue the branding opportunities associated with their names or their children’s names, but they also do not want others taking advantage of them. 

Celebrity trademark filings frequently raise issues with respect to whether a celebrity has a genuine intent-to-use the name as a trademark and the potential likelihood of confusion with existing marks -- which are not particularly unique legal questions, but garner more publicity with the celebrity connection. 

For Beyoncé, the Kardashians, and other celebrities, the trademark system is another tool to help them stake out their personal branding space and to defend it.  

Hashtags, Memes, and Emojis: The Landscape of #IP on Social Media

The internet and social media offer incredible marketing opportunities for businesses, but proceed with caution to avoid legal landmines!  Here are a few tips for navigating potential IP issues with memes, hashtags, and emojis.


For those who don’t know, memes are pictures, videos, or other content (often combined with a catchphrase or other text) that go viral on the internet and social media.  Memes frequently feature cats and can be hilarious...but who owns them? And can you create your own using someone else’s picture or video?

Memes intersect with copyright and privacy law.  Most memes involve images or videos, which can be created by the meme creator, but are usually created by someone else -- for example, many memes use still images from movies, which are owned by the film studio or production company.  Under copyright law, only the owner of an image has the right to reproduce, modify, or distribute the image, and the owner’s permission is required to use it.  

However, within copyright law is the doctrine of “fair use.”  Fair use allows use of a copyrighted work in a new work, without the owner’s permission, in certain situations.  Whether use of a copyrighted work is a “fair use” requires case-by-case analysis, but parody, criticism, and commentary are usually deemed fair use -- and most memes are usually created as parodies or other social commentary.  

Even if a meme or social media post is intended to provide social commentary, other important considerations in determining fair use are the amount of the original copyrighted work used, the effect of the use on the market for or value of the copyrighted work (which can vary based on the perspective of the original creator and the meme author), and whether the use is commercial in nature.  For companies creating memes to promote their products or for commercial benefit, the fair use defense may not apply. Let's say it snowed here in Colorado last night and Betty's Hardware in Denver took a screenshot from the Game of Thrones introduction and added a caption warning that “winter is coming, so buy a snow shovel from Betty's Hardware!” While it may be a funny meme, Betty’s Hardware’s use of the Game of Thrones image may be considered a substantial commercial use and not protected by the doctrine of fair use.

Even giving credit to the original creator of the image won’t necessarily protect you from legal action or controversy.  Many image repositories aggressively protect the materials in their catalogues. If someone makes a meme from an image owned by Getty Images, Getty may assert copyright infringement and demand a licensing fee. It doesn't matter if the meme creator attributes the original creator or Getty Images.  

Privacy law also may impact memes that use images or videos of people, especially if they are not public figures.  Videos or memes of clumsy dancers may be funny, but not to the person who suddenly has viral fame because he or she can’t dance. 

Hashtags – The Good, The Bad and The Ugly

There have been very few court cases involving memes, which isn’t surprising -- it can take several years for cases like these to make their way through the court system as it almost always takes some time to apply legal principles to new technological and social developments. However, courts are beginning to render decisions on the legal implications of hashtag use. 

Hashtags can be an effective branding tool and a fun way to optimize social media recognition and provide information to consumers.  Most social media users are savvy enough to recognize that tags are informative, but if you plan to use hashtags in your posts, you need to be wary.  

One recent court decision involved Align, the company that makes Invisalign, and Strauss, a company that makes a protective sleeve that goes over the scanner used by dentists to map out a patient’s Invisalign system.  

Strauss posted a picture of its sleeve and the Invisalign system scanner on social media. They tagged both Invisalign and Itero.  Align sued Strauss, claiming that Strauss’s use of the hashtags and images implied affiliation, association with or approval by Align.  

Strauss claimed it just used the hashtags to refer to its product's compatibility with Align’s system. The court disagreed and determined that Strauss was trying to piggyback on Align's success and name.  Use hashtags with caution, especially when tempted to tag anything other than your own company/product or using a tag to make claims about your product. Things may have gone differently for Strauss had it used “#invisaligncompatible”-type tags rather than simply using Align’s trademarks in the tags.

Emojis – Learn the Language First

Emojis are picture characters or icons used to express ideas or emotions.  Emojis have essentially evolved into their own language and can be a powerful and efficient way to communicate.  However, before you use this new language to express yourself, you need to understand its nuances.

Using emojis can create legal misunderstandings or controversies in business communications and on social media.  For instance, if a customer sends a proposal to purchase product and you respond with a “thumbs-up” emoji or a “happy face” emoji, have you just accepted the proposal and created a binding contract?  What if you respond to a competitor’s recent press release on Twitter with a “smirking” emoji? Have you just insulted the competitor or accused her of making a false statement? Perhaps you post a press release about your own product on Instagram and include a “championship trophy” emoji in the caption.    Does the emoji imply that your own product is award-winning, industry-leading, or otherwise denigrate your competitors?

One gut check is to translate the emoji you want to use into the corresponding words and test potential meanings.  Does it convey the meaning you intend or is it ambiguous enough that could be misinterpreted?

Again, the courts have not yet tackled interpretations of emojis regularly or consistently, but be cautious and aware when using them in the business arena.  

Use Social Media Strategically

There are a few things you can do if you find your images used in a meme, your company tagged in a way you'd rather not be associated with, or your social media post commented on with some ambiguous emojis. 

First, evaluate the harm to your business. If the meme, hashtag, or emoji is harmful or untrue, you may want to take action. 

Second, consider what action you want to take.  You could send a demand letter insisting the post be taken down.  Another effective response, however, could be using a cheeky meme, hashtag or emoji of your own. 

Companies are regularly calling each other out on social media, or “clapping back” at each other, rather than sending lengthy demand letters full of legalese.  For example, several fast food chains launched a chicken sandwich “war” on Twitter in 2019. Chick-Fil-A, which has long dominated the chicken sandwich market, teased Popeye’s about its newly-launched chicken sandwich by touting its own sandwich on Twitter as the “original.”  Popeye’s tweeted back a cheeky “y’all good?” And when Chick-Fil-A, which is closed on Sundays, tweeted "Is there anything better than enjoying one of our Spicy Chicken Sandwiches on a Friday afternoon?” Wendy's answered by tweeting "Yes, enjoying one of ours on a Sunday.” As a result of this Twitter war, all of the fast food companies have created enormous buzz for their products.  

What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws

What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws

Big names in the sports world have recently come under scrutiny for their trademark applications. In all these cases, the applications have been rejected. 

Tom Brady filed a trademark application for a nickname, but fumbled his application at the USPTO (and in the court of public opinion). In another, LeBron James scores as a trademark martyr, submitting an application he knows will be rejected to try to open up a commonly used term for all to use. And lastly, one university (guess which one?) tries to register a common three-letter word and is denied on multiple grounds. 

These applications all bring to light advanced IP laws and issues you might not have considered when protecting your brand or company. 

Related: Did You Get Punk’d By a Trademark Spammer or Patent Troll? 

Tom Brady Fumbles His “Terrific” Trademark Application 

Tom Brady recently filed a trademark application for the term TOM TERRIFIC, which he intended to use for T-shirts and fan collectibles. However, as you may or may not know, “Tom Terrific” is the nickname for Tom Seaver, an MLB Hall of Fame pitcher who played with the New York Mets for over a decade, including the “Miracle Mets” team that won the 1969 World Series Championship. 

Public outrage followed (not just from Patriots haters) and Tom Brady was widely derided for trying to co-opt the “Tom Terrific” nickname. After all, the term is clearly associated with a Hall of Fame athlete who was around before Brady was even born. 

Trademark Tidbit #1: Letter of Protest

Shortly after Brady’s application was filed, a letter of protest was filed with the USPTO. It was accompanied by more than 80 pages of evidence establishing that the term “Tom Terrific” is connected with Tom Seaver. 

After a trademark application has been approved by an examiner, it is published in the Official Gazette, which starts the clock on a 30-day opposition period during which the public has an opportunity to oppose registration of the mark on various grounds. But a letter of protest can be submitted even before the opposition period opens. A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark, but will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of examination of an application. 

A letter of protest is not appropriate in contentious situations, such as for claims of prior use or ownership disputes, but may be used to submit factual, objective evidence that a mark is not properly registrable — in this case, because TOM TERRIFIC could falsely suggest a connection with Tom Seaver.

The USPTO accepted the letter of protest and instructed the examiner to consider the evidence submitted.  The examiner then refused Brady’s application on the grounds that the term TOM TERRIFIC “points uniquely and unquestionably to Tom Seaver, and the fame or reputation of Tom Seaver as ‘Tom Terrific’ is such that a connection between Mr. Seaver and the applied-for goods would be presumed.”

When asked about the trademark application, Brady had an interesting response to the refusal. He said that he didn’t actually want to use the mark on any goods, as one might assume from having filed the application. Instead, he said that he wanted to file the trademark because he didn’t like that others had bestowed the “Tom Terrific” nickname upon him. He wanted to prevent anyone else from using it in connection with him. 

Trademark Tidbit #2: “Intent to Use” Application

Brady filed the TOM TERRIFIC application as an “intent to use” application. Trademark applications may be filed as use-based by applicants who are already using a mark in interstate commerce for identified goods or services, or also may be filed as “intent to use” by applicants who submit a declaration stating that they have a bona fide (or real) intent to use the mark in interstate commerce for the identified goods or services and submit a declaration supporting their intent.

So, did Tom Brady really intend to use the mark?  Did he just backtrack when caught in the act? Or was he trying to prevent people from calling him by Tom Seaver’s nickname?  

LeBron Takes the Fall for Taco Tuesday

Everyone knows Taco Tuesday, right?  Next Tuesday, head to any restaurant that serves tacos.  Bonus: Take a picture of your taco and tag it on social media with #tacotuesday. Last count on Instagram: 3.3 million posts with the hashtag.  

Hopefully the restaurant you went to isn’t advertising its “Taco Tuesday” festivities, or it may get a cease and desist letter from Taco John’s. Taco John’s owns a registration for TACO TUESDAY for restaurant services.  The restaurant claims that it has been using the mark since the late 1970s and, as it turns out, actively enforces its rights in the mark. Taco John’s’ registration applies everywhere in the United States except for New Jersey. Another registration exists in New Jersey, owned by a separate restaurant. 

Enter LeBron James. James regularly publicizes his family’s “Taco Tuesdays” on social media. James filed an application for TACO TUESDAY for use in connection with a wide variety of entertainment and advertising and marketing services, including podcasts, websites, and social media. It was refused on the grounds that the term TACO TUESDAY is a “commonplace” and “widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”

When asked about the application, LeBron James’ spokesperson said that, by filing the application, he wasn’t trying to obtain exclusive rights in the mark. Instead, James wanted to protect himself and open up the term to anyone who wanted to use it by provoking the USPTO into going on record that TACO TUESDAY is essentially a generic term.  

Related: What to Do When YOU Get a Cease and Desist Letter

Trademark Tidbit #3: Trademark Cancelation Petition

James’ strategy in this case may have been less expensive than filing a formal petition to cancel Taco John’s’ trademark registration for TACO TUESDAY, but may have accomplished a similar end result for him. The USPTO stated that the term is a commonplace message, widely used among restaurants, and not eligible for registration as a trademark. Taco John’s retains its registration (for now), but enforcement may be more difficult than it already was with the USPTO on record stating that the mark is “commonplace.” 

“The” Ohio State University’s Rejection Letter 

If you’re a college football fan, you may have picked up on The Ohio State University’s attempt to register the “The” before “Ohio State University” as a trademark in connection with T-shirts and baseball caps. 

Like Brady’s trademark application, Ohio State’s application for THE stirred up public outcry, particularly from fans of other college teams who find the emphasis to be somewhat pretentious. Attempting to claim exclusive rights in the word THE added insult to injury for those fans (especially fans of the University of Michigan). 

Trademark Tidbit #4: Source-Identifying Significance

As you might expect, the application was refused on a couple of grounds. First, it was refused on ornamental grounds. Ohio State submitted a specimen, or evidence, of its use of the mark on T-shirts and baseball caps.  However, the word was just screen printed on the shirt and stitched on the front of the hat, which the USPTO determined is decorative and has no real source-identifying significance. The purpose of a trademark is to indicate the source of goods to consumers and to distinguish the goods from those offered by others.  Decorative or ornamental use of a mark does not accomplish that purpose. 

The application was also refused because Marc Jacobs, a clothing designer and producer, has a prior-pending application for THE for clothing, apparel, backpacks, and handbags. Marc Jacobs submitted a specimen showing the mark on tags affixed to the items, which have source-identifying significance rather than appearing as decorative or ornamental features. 

Final Notes

Trademark law is tricky and advanced IP laws can sometimes stand in the way of your application. What do these three recent cases tell us?

  • Before you submit your trademark application, make sure that you’re appropriately filing the right type of application to avoid a Brady-esque snafu. 
  • If you want access to a trademarked term, you might just be able to get it if you pull a LeBron-style stunt. 
  • Determine if your desired trademark is ornamental, source identifying, or both before you file to dodge a rejection letter like Ohio State University.

What to Do When YOU Get a Cease and Desist

You may be familiar with Anheuser-Busch’s line of “Dilly Dilly” ads for its Budweiser beer. You may not have realized that Anheuser-Busch also obtained a federal trademark registration for “Dilly Dilly,” as a small brewing company with a beer named Dilly Dilly found out when Anheuser-Busch sent a cease and desist notice. Rather than sending a heavy-handed letter from outside legal counsel, Anheuser-Busch sent a town crier dressed in medieval garb to read the themed letter on camera. Anheuser-Busch even offered the brewery owners tickets to the Super Bowl in exchange for renaming the beer. All in all, it was a good public relations stunt that effectively accomplished the purpose of the cease and desist -- and likely dissuaded a larger audience from improperly using “Dilly Dilly.” 

Your chances of being met with a similarly humorous cease and desist are pretty slim. Most of the time, cease and desist letters show up in the mail as an unwelcome surprise. They’re intimidating and sometimes even confusing. 

If you’re on the receiving end of a cease and desist letter, and no one’s offering you free tickets to the Super Bowl to go along with it, here are a few things to know and keep in mind. 

What Is a Cease and Desist Letter?

Cease and desist letters are essentially a form of a demand letter, which is any letter that tells you that someone isn’t happy with what you’re doing. Demand letters aren’t limited to potential intellectual property infringement. You could receive them from a business partner who isn’t happy with your performance (or non-performance) or even from a competitor who disagrees with statements made in your marketing or advertising materials.

Bottom line: In a demand letter, someone is asking you to either stop doing something or to take some kind of action. This may be to stop using a term that someone claims infringes a trademark and to remove related materials from your promotional materials, or to simply hold up your side of a contract. 

How Worried Should I Be?

It really depends. You can get some clues as to how aggressive the other side is from the tone of the letter, but you may have to read between the lines to decode whether the sending party wants to discuss a business solution, or whether they are ready to engage in litigation if their demands are not met.

When Should I Contact My Attorney?

Sometimes, companies will try to handle a demand letter on their own at a business level, but you should generally consult your own attorney any time you receive a letter that makes legal claims or contains allegations of legal wrongdoing. Your attorney may be able to reach out to the other side to discuss the allegations and an amicable solution, or can help craft your response to screen for potentially damaging admissions that may increase your liability.  

At a minimum, you will need to conduct a factual investigation around the alleged conduct and consult with your counsel on the strengths and weaknesses in your legal position. Then, together, you’ll determine your strategy moving forward. 

Do Demand Letters Automatically Lead to Litigation?

You should never ignore a demand letter — but you don’t always need to immediately cave to the other side’s list of demands for fear of being sued. Responding to demand letters can be an art rather than a science and there is often room for negotiation before the other side runs to the courthouse.    

For instance, if a client receives a cease and desist letter regarding use of another company’s trademark, we will investigate the use and discuss any potential defenses with the client. If the client’s case is strong — perhaps the client has been using the trademarked term in circumstances that would not lead to consumer confusion — we may send a response disagreeing with the allegations in the letter and offering alternative resolutions. 

In other cases, the client may have good defenses but decide that continuing to use the mark is not worth the business distraction, so could agree to the demands on a timeline that minimizes the impact to the client’s business.

Cease and Desist Letters From a Big Brand 

More cease and desist letters and responses have gone viral recently, often because a heavy-handed letter was posted to social media by the recipient. Big brands are increasingly sensitive to the power of publicity and have, in many cases, become more creative and strategic than they have in the past. Many large brands want to avoid seeming like a big, threatening bully. 

For example, Starbucks once sent a formal, rather heavy-handed cease and desist letter to a small brewery in Missouri that was using the trademarked “Frappuccino” for one of its beer names. In response, the brewery sent Starbucks a $6 check — all the profits they’d made from that beer — and then publicized the letter and response. Starbucks caught a lot of heat for looking like a trademark bully. 

So, is it safe to troll a big brand on social media if they send you a cease and desist letter? As tempting as it may be, it’s better to err on the side of caution. Before you respond in any way, you should check with your attorney. 

Next Steps After Receiving a Cease and Desist

If you’ve received a cease and desist in the mail recently, don’t panic! You may be able to simply meet a few of the sender’s requests and then get back to business. Call your attorney, work through the letter and investigation together, and come up with an appropriate response.