Inadvertent publication

Today’s intellectual property-fest is brought to you by the letter ®.

If you’re a designer who is planning to file and prosecute your own trademark application, especially in the US, you really should think about what you supply as a specimen of use in support of your application. Not only should you ask yourself, “will this specimen prove that I’m using the trademark?” — which is something your specimen needs to do — but you should also ask yourself “do I want to put this on the public record?”

When you seek registered intellectual property rights — patent or trademark — what you submit to an intellectual property office becomes part of the public record, at some time or other, and it becomes accessible to the public, somehow. In the case of a US trademark application submitted electronically, that’s immediately and online.

(In the case of a patent application, with a few exceptions your application is published eighteen months after filing. Many patent offices publish the patent application online; the US and the European Patent Office now make the entire up-to-date patent file history, including the applicant’s submissions, easily accessible online. This is a terrific tool. Not only can you track your own patent applications as they wend their way through the system, but you can keep very close tabs on competitors, too.)

So, if your example of trademark use is a knitting pattern bearing your trademark, and you choose to provide the USPTO with a full copy of that pattern bearing your trademark as a specimen, then your complete pattern will be uploaded to the USPTO website and made available for download, for free, to anybody who knows where to look. Perhaps a knitting pattern might be your only appropriate specimen, but if that’s the case and it’s a multi-page publication, consider carefully whether you actually need to supply all pages as a specimen. It may well be that the first page or the cover page will be sufficient. And that way, you would avoid turning a document that you normally offer for sale into a free download.

If it turns out that you did do just that, I’m not certain there is a way to withdraw the specimen of use so that it no longer appears online. Conceivably parts of a file could be sealed by a confidentiality order, but a specimen of use cannot, and in a case like this a confidentiality order would have to be after the fact and if you’ve let the cat out of the bag yourself, it’s often hard to lock the barn door. (Please don’t cry over spilt milk. Just deplore my mixed metaphors.)

By engaging the patent or trademark system, you are at least implicitly giving the government permission to deal with your submitted work, even if protected by copyright, in a manner consistent with its legal obligations to the public.

Standard warning: just in case you start getting ideas, the fact that you, a user, manage to download a file with the apparent blessing of a government entity doesn’t mean that you have the right to start distributing the file to whomever you please. Copyright doesn’t explode into nothingness just because something’s on the net. Thank you.

Yes, I am being deliberately coy.

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2 Responses to Inadvertent publication

  1. Amie says:

    You have my brain churning as to who might have foolishly done that. I filed back in March and only submitted page 2 of one of my patterns. It onlys showed the list of materials, pattern overview, and other trivial information (trivial in the sense that it didn’t show anything more than what I post on the main pattern page of the item in question). I just can’t imagine someone not taking the time to think that through!

  2. Steph says:

    And you’re wagging the finger at someone…does she read your blog?

    I suppose it would set up a nice case–of course she stole my pattern your honour, it was on the patent site for everyone to see.