Trade secrets is one of the pillars of intellectual property. While copyright laws protect the expression of ideas, trade secret laws protect the abstract ideas, especially when a product is in the making and valuable ideas are being exchanged in meetings. The most effective way to protect trade secrets is traditionally through contractual relationships, e.g., signing non-disclosure agreements and confidential agreements with business partners and employees.
At the same time, trademark and copyright registrations can offer additional protections to the intellectual properties surrounding a trade secret, such as a product brand name in developing or computer source code in developing.
However, challenges remain in using trademark and copyright registrations for work that contains trade secrets, mainly because trademark and copyright registrations are public records and each require certain document to be deposited publicly. If any confidential material becomes part of public record, it is no longer protected under trade secret laws as its confidential nature is destroyed.
When applying for copyright registrations in the U.S., applicant is required to deposit a copy of the original work with the Library of Congress. If any work contains trade secrets, for example, confidential software code, the applicant can follow a special guideline to deposit part of the software code or request a special deposit handling with the Copyright Office. Such requests are not always granted.
It also needs strategy when applying for a trademark in the U.S. that concerns trade secrets. According to the U.S. trademark prosecution procedure, an applicant can narrow down the descriptions for goods and services in the same international class from the initial application, but cannot broaden the description later on. Thus, an applicant can file for a brand name with broad and vague description of the goods and services (to keep it secret), then tailor the description to the specific goods and services once the product is commercially available to the public. Be mindful that this strategy needs precise timing in handling the filings.
Generally speaking, trade secrets must be protected against the possibility of becoming public records in trademark and copyright filings. While trademark and copyright registrations can strengthen intellectual property protections for the product, they need to be handled with care and precise timing.
Silvia Sun, Esq.
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