Intellectual Property Law

Information about Trademarks Not Protectable as a Trade Secret

By Michael Atkins

Plaintiff K.S. and her guardian ad litem sued Ambassador Programs, Inc., and other defendants in the Eastern District of Washington.

Plaintiffs alleged that defendants made false representations about the People to People Student Ambassador Program, including that defendants misrepresented to plaintiffs that they had selected K.S. to be a student ambassador in Australia during the summer of 2006.

In the litigation, defendants produced a contract that defined the rights between the defendants pursuant to a temporary agreement between counsel pending a final agreement or order from the court.

Thereafter, plaintiffs sought leave to publicly file the contract in connection with a dispositive motion. Defendants sought to require plaintiffs to file the contract under seal.

This may be of interest to trademark practitioners because the contract in part governed one defendant’s use of trademarks owned by another defendant. This, the defendants argued, constituted a trade secret and, therefore, should not be publicly disclosed.

The court disagreed. Adopting the magistrate judge’s recommendation, the Eastern District of Washington found that the defendant already had disclosed the contracts’ subject matter in an annual report. Since the report was public, the contracts’ treatment of the trademarks was not a trade secret.

“Again, at p. 5 of the 2008 Ambassadors Annual Report,” the court found, “the Defendants clearly disclose to the public that Ambassador has registered or applied for a variety of service and trademarks. The Annual Report states, in pertinent part, under the heading of Service and Trademarks as follows: ‘In addition, we have the right, subject to certain exceptions, to use People to People’s name, service mark and logo for use in our marketing. We believe that the strength of our service and trademarks is valuable to our business and intend to continue to protect and promote our marks as appropriate. We believe that our business is not overly dependent upon any one trademark or service mark.’

“Thus, the Defendants clearly have made public the information that they have a relationship for Ambassador to use the trademark and logo of PTPI and that Ambassador is not overly dependent on any one of the trademarks. The consideration paid to use same, if any, is not disclosed in either the Annual Report or the Agreements themselves.”

Makes sense that publicly-disclosed facts cannot be protected as a trade secret.

For that reason, I question how one’s trademark registrations or applications could ever be protectable as a trade secret. One’s licensing agreements and marketing strategies are one thing, but the ownership of trademark applications and registrations are of public record. 

The case cite is K.S. ex rel. Isserlis v. Ambassador Programs, Inc.  2010 WL 605274, No. 08-243 (E.D. Wash. Feb. 18, 2010).

Full post as published by Seattle Trademark Lawyer on February 25, 2010 (boomark / email).