* Clocktower’s Book = IP Law In Plain English

17 Seconds #61 – A Publication For Clients And Other VIPs Of Clocktower.

Student to algebra teacher: Wouldn't it be more efficient to just find who's complicating equations and ask them to stop?

[Editor’s note: CAUTION, this newsletter, if printed, is about 70 pages long. If you are going to save it, then we suggest saving it electronically, not on paper.]

To slightly rephrase this cartoon, startups might ask “Wouldn’t it be more efficient to just find who’s complicating IP law and ask them to stop?”

Yes, it would be. But as long as IP law remains a messy mixture of constitutional law, statutory law, regulations, USPTO guidelines, and caselaw, you will need law firms like Clocktower to translate the legalese of IP law into plain English.

As I have written about previously, Clocktower has created a (MAMP-powered) library of paragraphs describing patent and trademark law in plain English. Each of said paragraphs is included in one or more email messages, each of which is most relevant at a particular point in time in the patent/trademark prosecution timeline.

The mother of all of these email messages, which includes all of the paragraphs (but not all of the email messages), is Clocktower’s “welcome letter,” so called because it used to be sent out on paper. I have often contemplated publishing an expanded version of the welcome letter as a book, but the problem with IP law these days is that it is changing faster than I could get a book to print!

So this newsletter will have to suffice.

There is a concept applicable to learning foreign languages and to marketing, namely the “seven times rule,” which states that a word (for language) or concept (for marketing) must be communicated seven times to stick. So we repeat ourselves a lot. It is intentional.

Without further ado, here is our “welcome letter,” in which we attempt to describe IP law in plain English, and which is as long as a book.

But feel free to contact your elected officials to ask them to stop complicating IP law!

—snip—

SUBJECT: Clocktower welcome & IP strategy

Hi TODO,

1. What’s Here

This email includes a detailed glossary of intellectual property (IP) law issues. Patent law is insanely complicated. Patent law is the only law practice specialty that requires both (1) a specific undergraduate degree (typically engineering) and (2) a separate bar exam (the so-called “patent bar” exam). Trademark law is also very complex. Both patent law and trademark law are administered by the United States Patent and Trademark Office (USPTO). We have translated patent law, trademark law, and related IP law concepts into plain English. You will see these concepts in context during the course of filing, prosecuting, and renewing your patents and trademarks. Our job is to teach you enough about IP law to make the right business decision at the right time. Your job is to teach us enough about your business to write the patents and file the trademarks. The two most important concepts are as follows:

PATENT PLANNING – FILE BEFORE LAUNCHING. U.S. patent law changed significantly from 2011 to 2013 due to the America Invents Act (AIA) (http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act). The AIA was fully implemented on 2013-03-16, which made the U.S. a first-inventor-to-file country (and replaced the former first-to-invent system). The U.S. is also essentially an “absolute novelty” country. As such, you should file your patent application before you launch (where “launch” is defined as sale, offer for sale, publication, or public use) your product/service/improvement. This is the only certain way to protect both U.S. and foreign patent rights.

TRADEMARK PLANNING – FILE BEFORE LAUNCHING. It is much more expensive to cure trademark problems than it is to prevent them. As such, you should fully vet any new trademark (for a company name, logo, tagline, product name, service name) by searching the trademark and (if the search is favorable to you) filing a trademark application. We have guided many clients through the expensive rebranding process. In an ideal world, you would be the first to use, first to file, and first to register your trademark. Disputes with third parties can occur when one party is first at one thing and the other party is first at another. Registering your trademarks as soon as possible can also help you secure your brand on the Internet, including domain names and social networking usernames.

HOW WE COMMUNICATE. This is an example of how Clocktower communicates:

  • All of our key emails and letters include three sections: (1) What’s Here, (2) Recommendation & Requested Action, and (3) Next Steps.
  • We use descriptive subjects, including our docket information, so that emails are easier to search/find.
  • We date documents in YYYY-MM-DD format so that sort-by-name equals sort-by-date.
  • We CC info@clocktowerlaw.com on key emails (and ask you to do likewise) since email to that address goes to all of us in the firm.
  • Many of our emails and letters (including this one) are based on templates that we are constantly updating. Your feedback and suggestions are welcome. Continuous improvement is our goal!

2. Recommendation & Requested Action

We recommend reading and saving this email. Please note all deadlines. We require notice two months before all patent deadlines and two weeks before all trademark deadlines to prepare and file the appropriate documents.

3. Next Steps

We will periodically send you letters and emails. For example, after your patent application is filed, we will send status reports every six months (in the fall and spring).

Thank you for choosing Clocktower. Let us know if you have any questions.

Best,
Mary

Best,
Mike

Best,
Erik

Clocktower Law LLC
537 Massachusetts Ave., Suite 301
Acton, MA 01720
http://www.clocktowerlaw.com

—snip—

Copyright Law

COPYRIGHTS VS. PATENTS VS. TRADEMARKS. Generally, your company’s name and logo can be trademarked; your company’s product can be patented, copyrighted, or both. Copyright protects against making exact copies, while patents provide broader protection, protecting against not only literal copying but also equivalent copying. Copyright registration is a matter of filling out the right forms and sending in the right fees, and all of the forms are online at the U.S. Copyright Office (http://www.copyright.gov/). As such, we have rarely done copyright work for our clients, not because we’re not good at it, but because we feel that it is money that is not well spent.

Domain Names

DOMAIN NAME DISPUTE – UNIFORM DISPUTE RESOLUTION POLICY (UDRP) OVERVIEW. The UDRP was established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolved disputes regarding the registration of domain names (http://en.wikipedia.org/wiki/UDRP). For a complainant to acquire a domain name from a registration via a UDRP proceeding, the complainant would must show that:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) The domain name registrant has no rights or legitimate interests in the domain name; and
(3) The domain name has been registered and is being used in bad faith.

Proving bad faith is difficult. If a domain name contains only generic or descriptive words, then the complainant is not likely to prevail. If the domain name contains distinctive words, then the complainant is more likely to prevail. Evidence of bad faith includes – but is not limited to – unsolicited offers by the registrant to sell the domain name to the complainant.

FOREIGN DOMAIN NAMES. For list of top-level domain names, their meaning, their origin, and who may register them, see the Network Solutions website (https://www.networksolutions.com/faq/extension-whatis.jsp).

WHOIS INFO FOR CLOCKTOWER. If you use the same email address for all types of whois contacts, then you increase the risk of domain name theft. For this reason, we list Clocktower Law LLC as the administrative/billing contacts and GiantPeople LLC as the registrant/technical contacts.

organization/registrant/owner/client: Clocktower Law LLC | GiantPeople LLC
firstname: Erik J.
lastname: Heels
address1: 537 Massachusetts Ave., Suite 301
address2: [blank]
city: Acton
state: MA
ZIP: 01720
country: United States
email: info@clocktowerlaw.com | info@giantpeople.com
nameservers: NS29.DOMAINCONTROL.COM, NS30.DOMAINCONTROL.COM

Clocktower Policies

CLOCKTOWER CONFLICTS POLICY.

a. Clocktower Law LLC (Clocktower) conducts conflict-of-interest checks for each new client.
b. If there is an actual conflict of interest, then we are unable to represent either party, and we withdraw from (or decline to commence) representation.
c. If there is the appearance of a conflict of interest, then we will also withdraw from representation, unless both parties consent to the representation.
d. Clocktower never puts the interests of one client above another.

CLOCKTOWER DOCUMENT RETENTION POLICY. We save key documents as PDFs. We retain email metadata for one year, all other files for ten, after which we delete them. We backup all documents daily. We don’t maintain paper files.

CLOCKTOWER MISTAKES POLICY. No law firm is perfect. When we make a mistake, we will admit it, fix it as soon as possible, to the best of our ability, to the extent possible, and at no cost to you.

CLOCKTOWER TECHNOLOGY POLICY. We run the latest versions of Acrobat, FileMaker, and OpenOffice. For billing, we use QuickBooks Online. To ensure our technology is up to date, we replace computers every four years.

Patent Law

PATENT ARTICLES.

* The Who, What, Where, When, Why, And How Of Patents
http://www.clocktowerlaw.com/3112.html

* Drawing That Explains Patent Costs
http://www.clocktowerlaw.com/3042.html

PATENT ASSIGNMENTS. In an application with multiple inventors, each inventor has the right to license the application. With an assignment to one company, this problem doesn’t exist. Plus, an assignment to a company is often required by any potential investors. In order for us to prepare the assignment documents, we need the name, home address, and citizenship of each inventor, and the name, address, and state of incorporation of your company.

PATENT BOOK – PATENT IT YOURSELF BY DAVID PRESSMAN. If you have the time but not the money to file patents, then there are still good options available to you. The book “Patent It Yourself” by David Pressman (https://store.nolo.com/products/patent-it-yourself-pat.html) is a good intro to the patent process in general.

DESIGN PATENT CLAIMS. “The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.” (37 CFR 1.153).

DESIGN PATENT DRAFTING. A design patent application has three primary parts: (1) a title, (2) a claim describing the design, and (3) one or more drawings. The title and the claim describe the the object to which your design relates. The title and design should be crafted broadly to cover all possible uses. The drawings for the design application should show as many views of the claimed design as are necessary to fully describe and disclose the design, because no new matter may be added after the application has been filed. Broken or dashed lines may be used to show portions of the object not pertinent to the claimed design. We recommend at least three views: (1) a top plan view, (2) a side plan view, and (3) a perspective view.

DESIGN PATENT DRAWINGS. “The design must be represented by a drawing that complies with the requirements of 37 CFR 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.” (37 CFR 1.152).

DESIGN PATENT INFRINGEMENT. Whether an accused product infringes a design patent is a matter of fact. To determine if a design patent is infringed, the trier of fact (judge or jury) compares the non-functional aspects of the patented design with the accused product. The trier of fact determines whether the patented design as a whole is substantially similar in appearance to the accused design. If, in the eye of the ordinary observer, giving such attention as a purchaser usually gives, the two designs are substantially the same, and if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, then the accused product infringes the patented design.

DESIGN PATENTS IN A NUTSHELL. Design patents cover the non-functional ornamental aspects of an object (such as the look of an Apple iPod or of Nike sneakers). The design must also be new and nonobvious. Design patents last 15 years (35 U.S.C. 173). A design patent application must be directed to an ornamental design for an object. The object must have some functional use. The design must be inseparable from the object and not merely surface ornamentation. Design and utility patents are each entitled to claim priority from each other. In short, design patents relate to external appearance rather than internal structure or function.

DESIGN PATENTS VS. UTILITY PATENTS. In general terms, a utility patent protects the way an article is used and works (35 U.S.C. 101), while a design patent protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance (MPEP 1502.01).

PATENT DRAFT – HOW TO REVIEW. Each patent draft should be reviewed (1) for accuracy, (2) to make sure it is “enabling,” and (3) to make sure that the “best mode” has been disclosed. If corrections are required, then please provide corrections as replacement paragraphs.

PATENT DRAFTING – NUMERICAL RANGES OF VALUES. The general rule for numerical range limitations is that the claimed ranges are patentable only for the ranges that one skilled in the art would consider supported by, or within the scope of, the original disclosure.

PATENT DRAFTING – PATENTABILITY VS. PATENT BREADTH. Having more elements in your invention improves the invention’s patentability but decreases the patent breadth. Having different elements improves the invention’s patentability. Having fewer elements increases the patent breadth. Many inventors must change their designs to accommodate the competing needs of patentability and patent breadth.

PATENT FILING RECEIPT – OFFICIAL. We have received the official Filing Receipt from the United States Patent and Trademark Office (USPTO) for your patent application. The filing receipt serves as documentation that your application is on file at the USPTO and gives you approval to file for foreign patents. The filing receipt also serves as a reminder to file an Information Disclosure Statement (IDS) and an assignment for your application.

PATENT FILING RECEIPT – UNOFFICIAL. Since we filed this application electronically, we have already received an unofficial receipt. In three to eight weeks, we should receive the official filing receipt for this application.

FOREIGN PATENTS AND ABSOLUTE NOVELTY. You should keep your inventions a trade secret until a patent application that covers the invention is filed. Most countries follow the “first to file” rule and apply the “absolute novelty” rule. As such, any pre-filing disclosures can make it impossible to obtain patents outside of the U.S. Outside of the U.S., the basic “absolute novelty” test is that something is new “if it does not form part of the state of the art.” For example, in Europe, the state of the art includes all that has been “made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing [or priority] of the European patent application” and also includes, to a limited extent, matters in co-pending conflicting European applications. For something to lack novelty, the public must have had possession [knowingly or not] of the teaching of the invention. This means, for example, that there is no on-sale bar in European law. Someone can use a process in a commercial context and – provided that the public cannot find out how the invention is exercised – it can still be patentable. For products sold to the public, the test is whether the product can be analyzed (reverse engineered) to reveal the invention – regardless of whether or not someone had the motivation to analyze. If a product has been used before filing, then it is less likely that protection for the product can be obtained. With client/server type products, where only part of the system may have been made available to the public, and part kept secret, it may still be possible to protect those parts that have not been made public and the details of the relationship between the public and non-public parts. In short, whenever any disclosure of an invention has been made before the U.S. patent filing, there is a risk of losing corresponding foreign patent rights.

FOREIGN DESIGN PATENTS. Foreign patent applications based on design patents must be filed within six months of your earliest filing date. Within six months of your earliest-filed U.S. application, you can file applications in individual foreign countries (but not under the PCT). Note that not all countries offer design patent protection.

PCT DEMAND – DEADLINES AND THE MAVERICK COUNTRIES. Demand filings used to be required in order to get the full benefit of the 30-month PCT pendency period, but PCT rule changes in 2002 extended the full benefit of the 30-month period (without having to file a Demand) in all but a handful of countries, and even if you don’t file a Demand in those countries, you can still get the full benefit of the 30-month pendency period by filing regional (e.g. EPO) patent applications that include those countries. In other words, with or without filing a Demand, a PCT application provides up to 30 months for applicants to make a decision on filing patent applications in individual countries or regional patent offices (e.g. EPO). If you plan to file directly in the “maverick” countries (Luxembourg, Tanzania, or Uganda) at 30 months, then you must file a Demand by the 19-months deadline. Otherwise your deadline to file directly in these countries is at 20 months. You can still get protection in these countries without filing a Demand if you choose to file regional patent applications at 30 months with the European Patent Office (EPO) (for Luxembourg), and the African Regional Industrial Property Organization (ARIPO) (for Tanzania and Uganda).

PCT DEMAND – REASONS NOT TO FILE. Currently, only about 10% of PCT applicants worldwide choose to file a Demand (largely due to the 30-month rule changes in 2002, before which the demand filing rate was much higher). Cost is the main reason why applicants choose not to file a Demand. Another reason is that the initial PCT filing fees cover a search report and an initial, non-binding opinion on patentability. This report and opinion can be used to make a decision about whether to proceed at the national stage, or to file amendments. This Written Opinion is supposed to arrive at month 16. Unfortunately, this report usually does not arrive until after the deadline for filing a Demand.

PCT DEMAND – REASONS TO FILE. Filing a Demand will give you (1) an opportunity to amend your application, (2) an opportunity to rebut the examiner’s findings in the Written Opinion, and (3) a preliminary, non-binding opinion on novelty, inventive step, and industrial applicability (i.e. whether your invention is new, non-obvious, and useful). The Demand does not give you an opinion on patentability according to the national laws of the elected countries, but this preliminary opinion is usually persuasive to many countries, especially countries with smaller patent offices. The biggest advantage to filing a demand is the opportunity to amend claims, description, or drawings before entering the national stage. If the application needs to be amended, then amending during the international stage means that the application as amended will be sent to designated countries during the national stage. Otherwise, an applicant may spend thousands of additional dollars in prosecution costs to amend through individual patent offices. Another advantage is the opportunity to “grease the skids” for the national stage. If you receive a favorable preliminary examination, then the accompanying report may be persuasive to many national patent offices. This means that many individual patent offices may allow your patent application without initial rejections to overcome. Such a scenario can potentially save thousands of dollars in prosecution costs and enable patents to issue faster. Filing a Demand provides an opportunity to enter into a dialogue with the examiner at the International Preliminary Examining Authority to influence the content of the International Preliminary Report on Oatentability.

PCT – DEMAND. A key business decision for PCT applicants occurs 19 months from the priority date. At this time, you can choose whether or not to file a Demand for International Preliminary Examination (AKA a “Demand”). Filing the Demand is optional. The Demand can provide you with an idea of what would happen during prosecution in individual countries. An International Preliminary Examination Report (IPER) that is favorable to the patent applicant can be persuasive for countries with smaller patent offices, but the IPER is not binding on any patent office. As a result, only about 10% of PCT applicants choose to file a Demand. Most applicants are simply looking to delay foreign prosecution costs.

PCT – INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (IPRP). For PCT applications, international preliminary examination is carried out on the basis of the International Search Report (ISR) and the written opinion of the International Searching Authority and concludes with the International Preliminary Report on Patentability (IPRP). The purpose of the international preliminary examination is to formulate an opinion – which is preliminary – on whether the claimed invention appears (1) to be novel, (2) to involve an inventive step (i.e. nonobvious), and (3) to be industrially applicable (i.e. utility). While there is not a uniform approach to these criteria in national laws, their application under the PCT during the international preliminary examination procedure is such that the IPRP gives a good idea of the likely results in the regional/national phase. Note that although the IPRP is not binding on elected Offices, it carries weight with them (considerable weight with smaller patent offices), and a favorable report will assist the prosecution of the application before the elected Offices.

PCT – INTERNATIONAL SEARCH REPORT (ISR). About 16 months from a PCT application’s priority date, a PCT applicant will receive an ISR, citing patents and/or publications relevant to the patentability of your invention, and an accompanying Written Opinion. The ISR and Written Opinion can give you and idea about whether or not your application will be patentable. Responding to the ISR is optional, so there is no need to respond unless the cited references make amendments to the claims necessary. Claim amendments can also be made upon entering the national/regional phase.


The ISR (under PCT Article 18 and Rules 43 and 44) must be issued within three months of the date of receipt of the search copy by the International Searching Authority (ISA), or nine months from the priority date, whichever is later. An ISR contains:

  1. International Patent Classification (IPC) symbols;
  2. Indications of the technical areas searched;
  3. Indications relating to any finding of lack of unity of invention;
  4. A list of the relevant prior art documents; and
  5. Indications relating to any finding that a meaningful search could not be carried out with respect to certain (but not all) claims.

The Written Opinion:

  1. Is a preliminary non-binding opinion on novelty (i.e. not anticipated);
  2. Is a preliminary non-binding opinion on inventive step (i.e. not obvious);
  3. Is a preliminary non-binding opinion on industrial applicability (i.e. utility);
  4. Will be established for all PCT applications;
  5. Is sent to the applicant with the ISR;
  6. Is not published together with the application; and
  7. Has no formal procedure for applicants to respond (and applications should not respond informally, because your comments become public at the 30-month point).

PCT – NATIONAL/REGIONAL STAGE. Most industrialized countries are members of the PCT (http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf), and WIPO has a good chart that illustrates the overall PCT process and timeline (http://www.wipo.int/pct/en/seminar/basic_1/timeline.pdf).

At the national stage (i.e. the 30-month point), you can file in individual countries or in groups of countries considered “jurisdictions.” For example, the European Patent Office (EPO) is considered a “jurisdiction” under PCT rules, so you could file one EPO application that would cover the major European countries (http://www.epo.org/about-us/foundation/member-states.html).

In most countries/jurisdictions, you have until the 30- or 31-month point to make a decision about filing foreign patent applications. There are three “maverick” countries (Luxembourg, Tanzania, and Uganda) that do not follow the 30- or 31-month rule. For these countries, you would need to begin foreign prosecution at 20 months. Coverage for these countries, however, can be recaptured at 30 or 31 months by filing regional patent applications. For example, to regain coverage in Luxembourg, you could file an EPO application by the 31-month deadline.

Filing in the EPO is expensive for U.S. residents. In addition to our having to work through a European agent, there are annual filing fees just for keeping your application pending at the EPO (http://www.epo.org/applying/forms-fees/fees.html). There are also annual filing fees for filing in some individual countries (e.g. France, Germany, Italy, Australia, the Netherlands).

FOREIGN UTILITY PATENTS. Foreign patent applications must be filed within one year of your earliest filing date. Whether your first-filed patent application was a provisional application or a non-provisional application, you have one year to file foreign patent applications based on your earliest-filed U.S. patent application. Within one year of your earliest-filed U.S. application, you can file applications in individual foreign countries (or jurisdictions such as the European Patent Office (EPO)) or you can file under the PCT.

A. Foreign Filing in Individual Countries

If you only want patent protection in a few countries and want protection as soon as possible, then it is best to file in each selected country. This immediately starts prosecution of your application on the merits in the selected countries and can result in patents issuing a year or more earlier than with the PCT.

Filing in individual countries involves two steps. First, file an application with the USPTO. Second, within 12 months of your U.S. filing, file individual applications in each country in which you want protection.

B. Foreign Filing under the PCT

If you believe that your invention will or may have economic value in multiple nations, then consider filing an application under the Patent Cooperation Treaty (PCT). By filing a PCT application, you can simultaneously seek protection for an invention in over one hundred countries (including the EPO).

Under the PCT, there is an initial cost to get the PCT application filed, and prosecution costs (when the application enters the “national stage”) about 12 months after filing. The PCT defers prosecution costs for individual countries until about 18 months after filing.

The PCT is a treaty regarding filing, searching, and examination of patent applications and the dissemination of the technical information contained therein. Although the PCT does not provide for the grant of “international patents,” the PCT provides many advantages:

  • Single initial filing fee.
  • Single preliminary international patent search.
  • One set of formality requirements.
  • Single international publication.
  • Single international preliminary examination and prosecution of application.
  • Translations and national fees required at 20 or 30 months and only if you wish to proceed.

A main advantage of filing a PCT application is the international search and preliminary examination of the application. PCT examiners check the application for international patentability, conduct an international patent search, and give a preliminary patentability opinion. You can review this patentability opinion before making a decision to proceed in individual countries. This patentability opinion is sent to the designated countries, which typically give weight to its findings but are not bound by the opinion.

You may either file first in the USPTO and then file under the PCT within 12 months, or you may directly file under the PCT. After filing under the PCT, you have 20 to 30 months from your earliest filing before prosecuting your application in each individual country. Thus, a PCT application buys you extra international “patent pending” time for your invention. In this way, a PCT application is like an extended, international, provisional application. The PCT is basically a fee-deferring device. It will not spare you from translation and prosecution costs in foreign countries, but it can postpone that decision for up to 30 months.

In short, if you want to protect your invention in other countries, then you will need to file foreign patent applications, an EPO application, or a PCT application before the one-year anniversary of your earliest patent filing (e.g. the provisional filing date if you filed a PPA).

PATENT FORMS. For the patent forms, we need home address, phone number, and citizenship information for all named inventors. You can fax the signed forms back to us. We recommend saving the signed originals.

PATENT HURDLE – NOVELTY AND ANTICIPATION. In order for an invention to be patentable, its elements must be novel. If any “prior art” (patent, patent application, or publication) includes all of your invention’s elements, then your invention has not satisfied the novelty requirement. In this case, the prior art is deemed to “anticipate” your invention (i.e. to render it “not novel” in the eyes of the USPTO). Note that both old and current patents can anticipate an invention and thereby make it unpatentable.

PATENT HURDLE – OBVIOUSNESS. In order for an invention to be patentable, its elements must be nonobvious. If two or more previous inventions can be combined to include all of your invention’s elements, then your invention has not satisfied the nonobviousness requirement. When the USPTO rejects an invention as being “obvious,” they are essentially saying that it may be new, but not quite “new enough.”

PATENT INVENTORSHIP AND DATE OF INVENTION. Patent inventorship is determined on a claim-by-claim basis based on one question: “Whose idea was this?” Since claims change over time, so too can inventorship. Before any pending patent issues, you must review the final claims and remove any inventor whose ideas did not make it into the final approved claims. Similarly, you must correct inventorship to add any inventor whose ideas do make it into the final approved claims (and file the appropriate assignments). Failure to correct inventorship can render the patent invalid. Also. “reduction to practice” relates to date of invention but (confusingly) not to inventorship. In other words, the one who conceived of the idea is the inventor, regardless of who reduced it to practice. This is why Steve Jobs is listed (correctly) as an inventor on so many Apple patents, most of which he clearly did not personally reduce to practice.

  • Conception. “Unless a person contributes to the conception of the invention he [or she] is not an inventor…. One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). MPEP 2137.01.
  • Reduction To Practice. “There is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on the inventor’s behalf.” In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
  • Joint Inventors. Inventors may apply for a patent jointly even though: (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 UCS 116. “The critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.” Ethicon, 135 F. 3d at 1460.
  • Licensing. In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States. 35 USC 262.
  • Identifying Inventors. Contributions of named inventors should be evaluated after claims defining the invention are finalized. Inventorship may vary from claim to claim. Claim amendments may impact inventorship. Try to get all team members to agree who are the inventors. Each inventor not have made an equal contribution to the invention.

PATENT ISSUANCE – CERTIFICATE OF CORRECTION. Please review your patent for any errors. Minor errors can be corrected by filing for a Certificate of Correction. Alternatively, minor errors may simply be made of record in the patent file through a letter. Correcting material errors would require reexamination of the patent. If there are any errors in the patent that you believe are worth correcting, then please contact us.

PATENT ISSUANCE. Patents generally issue six weeks after paying the issue fee. The issued patent will be published in the USPTO Patent Official Gazette, which is often read by potential licensors. The patent will be valid for twenty years from the date of originally filing the parent application.

PATENT ISSUED. Congratulations! The USPTO has issued a patent for the subject application. The original patent document is enclosed. The patent grants you the right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or importing the invention into the U.S. for the term of the patent.

PATENT LICENSING. In some cases, you may need to secure a license to avoid infringement. In other cases, you may be able to generate revenue by licensing your invention to others. A patent, by itself, cannot infringe another patent. A prerequisite of infringement is that you must make, use, or sell the patented item in this country. In other words, even when you patent something, you must license others to be able to make, use, or sell your patented invention. Similarly, others must license your patent in order to make, use, or sell their products (whether patented or not).

PATENT MAINTENANCE FEES. Patent renewal fees (called “maintenance fees”) are due at 3.5, 7.5, and 11.5 years from the patent’s issue date. Failure to pay the maintenance fees on time may result in expiration of the patent. The USPTO does not mail notices to patent owners that maintenance fees are due.

PATENT NOTICE OF ALLOWANCE. When a Notice of Allowance issues, you have three months to pay the Issue Fee. If you don’t pay the Issue Fee, then the application will go abandoned.

OFFICE ACTION DELAYS. The Patent Office is supposed to provide a first Office Action within 14 months of the filing date (35 U.S.C. 154), but the average time for receiving a first Office Action can be substantially longer. If your Office Action is sent more than 14 months from the filing date of your application, then the term of your patent will be extended accordingly.

OFFICE ACTION FOUND ALLOWABLE SUBJECT MATTER – YOU’RE ABOUT TWO MONTHS FROM ONE PATENT. Very good news. In this Office Action, the examiner found some claims allowable, rejecting the rest. So we can split this application in two, pay the issue fee, and you’ll have at least one issued patent in about two months.

OFFICE ACTION REPLY. In order to overcome the USPTO’s rejections, we must craft a reply to the Office Action with legal arguments that technically distinguish your invention from the prior art. The key to this analysis is distinguishing how the elements of your invention (as defined in the claims) are different from the elements of the prior art. You can identify the technical differences (e.g. by creating a simple chart), and we can describe these differences with the proper legal language for the reply.

OFFICE ACTION – RESTRICTION REQUIREMENT. This Office Action is procedural, not substantive. The USPTO has stated that the application claims multiple distinct inventions. There are three options for responding: (1) argue that the restriction requirement was improper, (2) divide the application into multiple divisional applications (one for each species of invention), or (3) elect one species. Option 1 is usually not successful. Option 2 is expensive, because it results in multiple patents. The USPTO will gladly accept additional filing fees to search and examine what it considers to be multiple inventions, but you only get one search/examination for the filing fees that you’ve paid. As such, option 3 is what most applicants choose, sometimes in combination with option 1. In other words, the most common approach is to elect one species of invention while arguing that the restriction requirement was improper.

OFFICE ACTION. The USPTO’s reply to a patent application is called an “Office Action.” In the first Office Action, the USPTO initially examines the patentability of your invention. The USPTO typically rejects all of the claims in a patent application in its first Office Action, essentially challenging us to prove that your invention is patentable. In subsequent Office Actions, the USPTO may make similar arguments, which require more fine-tuned replies. You usually get only two Office Actions for your initial filing fee and can usually continue prosecution (i.e. beyond the second Office Action) by paying additional fees. It is not unusual to have two or more rejections from the USPTO.

PATENT OUTLINE – PUBLISHED APPLICATIONS. Here are some patent documents that are based on our patent outline:

* Network Monitoring, Detection, and Analysis System
Avraham Tzur Freedman, Ian Gerald Pye, Daniel P. Ellis (published 2017-07-20)
https://www.google.com/patents/US20170208077

* Multi-User Cloud Parametric Feature-Based 3D CAD System
Jon K. Hirschtick et al. (published 2016-08-25)
https://www.google.com/patents/US20160246899

* Method And System For Large Scale Data Curation
Nikolaus Bates-Haus et al. (published 2015-10-01)
https://www.google.com/patents/US20150278241

* Numeric Input Control Through A Non-Linear Slider
Michael Lauer (published 2015-10-01)
https://www.google.com/patents/US20150277718

* Switching Device Configured For Operation On A Conventional Railroad Track
Brendan English (published 2014-10-23)
https://www.google.com/patents/US20140311377

* Optical Analyzer For Identification Of Materials Using Reflectance Spectroscopy
Ronald H. Micheels, Don J. Lee (published 2013-10-03)
http://www.google.com/patents/US20130256534

* Yoga Mat With Intuitive Tactile Feedback For Visually Impaired
Tracy Lynn Curley (published 2011-05-19)
http://www.google.com/patents/US20110118097

* Auto-Lock Compact Rope Descent Device
Peter M. Schwarzenbach, Samuel Morton (published 2010-09-23)
http://www.google.com/patents/US20100236863

* Human-Computer Productivity Management System And Method
Mark Anthony Chroscielewski (published 2009-09-03)
http://www.google.com/patents/US20090222552

* Online Entertainment Network For User-Contributed Content
Benjamin Clark Campbell (published 2008-04-17)
https://www.google.com/patents/US20080091509

* System And Method For Optimizing Website Visitor Actions
Eric Hansen (published 2006-11-30)
http://www.google.com/patents/US20060271671

* Method And System For Pricing Electronic Advertisements
Brian O’Kelley (published 2006-06-08)
http://www.google.com/patents/US20060122879

* Pressure-Sensitive Light-Extracting Paper
Kevin Gerard Donahue (published 2006-05-18)
http://www.google.com/patents/US20060105149

PATENT OUTLINE. Our patent outline (clocktower-patent-outline.doc) helps keep your costs down by providing us the info that we need to write the patent. There are lots of instructions in the document itself.

[OPTION]
As discussed, you have decided to file a provisional application now. Since you are post-launch, foreign patents are not possible (but this matters less for software, which is difficult/impossible to patent out side of the US). Filing a provisional is a good choice for startups whose products are still evolving. The big picture plan is to file additional provisionals for any patentable improvements (if any). Then, within a year of the earliest provisional, file a single U.S> nonprovisional application that rolls up all previous provisionals.

[OPTION]
Don’t worry that the outline says “utility patent application” when we’re filing a “provisional patent application.” To write a good provisional patent application, we must write it as it if were a utility patent application.

PATENT-PENDING vs. ISSUED PATENTS. Your invention is “patent-pending” as soon as any type of patent application is filed (and as long as the application is not abandoned). “Patent-pending” primarily gives you bragging rights. Patent applications have no enforceable rights until a patent is granted. However, if an application owner puts a third party on notice about an application, and if the third party infringes claims of a patent application that eventually issues as a patent, then the third party could be responsible for a reasonable royalty for any products sold during the patent pendency. A reasonable royalty is not a significant judgment as most royalty rates are single digit percentages. After a patent is granted, a patent owner can stop others from making, using, or selling the patented invention via patent litigation or otherwise. Willfully infringing a patent can result in triple damages.

When someone claims “patent pending” status, it is impossible to know whether or not they filed a Provisional Patent Application or a Nonprovisional Patent Application. Provisionals last for only one year and are not published. Nonprovisionals are published 18 months after they are filed unless the applicant filed a non-publication request (which states, among other things, that the applicant has not filed and will not file foreign patents). When nonprovisonals are filed with nonpublication requests, the application will not be published unless/until it issues. To further complicate matters, applications are often filed in the name of the inventor, and if the inventor has not filed an assignment, then no record of the employer will be found at the USPTO. In short, it is difficult to discover meaningful information about a claimed “patent pending” status.

PATENT PLANNING – BEST PRACTICES. Our general advice for patents is that you should file in countries where you have significant business, partners, investors, or potential acquirers.

PATENT PLANNING – BUSINESS ISSUES. It is never possible to say with certainty whether an invention is patentable or whether an invention will infringe an existing patent. Ultimately, your decisions whether to pursue a patent and whether to make or use or sell your invention will be business decisions based on all factors, including any legal issues.

PATENT PLANNING – EQUINOX STATUS REPORTS. While your patent is pending and awaiting a response from the USPTO (an Office Action), we will send you status reports twice per year (once in the spring, once in the fall). This (1) allows us to make sure that the USPTO hasn’t lost or misplaced your application, (2) provides you with a rough date of when you can expect a reply from the USPTO, and (3) satisfies the applicant’s duty of diligence. Most applications are pending for multiple years before the USPTO begins to examine them.

PATENT PLANNING – FILE BEFORE LAUNCHING. U.S. patent law changed significantly from 2011 to 2013 due to the America Invents Act (AIA) (http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act). The AIA was fully implemented on 2013-03-16, which made the U.S. a first-inventor-to-file country (and replaced the former first-to-invent system). The U.S. is also essentially an “absolute novelty” country. As such, you should file your patent application before you launch (where “launch” is defined as sale, offer for sale, publication, or public use) your product/service/improvement. This is the only certain way to protect both U.S. and foreign patent rights.

PATENT PLANNING – INFRINGEMENT AND DESIGNING AROUND. In order for any invention to “infringe” a current patent, the invention must contain each element of the patent, or the invention must contain elements that perform substantially the same function in the same way to achieve the same result. This latter concept is known as the “Doctrine of Equivalents.” For example, if a current patent contains three elements (A+B+C), and your invention contains four elements (A+B+C+D), then your invention would infringe the patent. If you substituted element A2 for A, but element A2 performs the same function, in the same way, and achieves the same result as A, then your modified invention (A2+B+C) would still infringe the patent. However, if you remove one of the elements (removing A) from your invention (now B+C) or if you change one element (changing A to E) so that it performs a different function, performs in a different way, or achieves a different result, then your modified invention (B+C or E+B+C) would not infringe the patent. So one way to avoid infringing a patent is to “design around” the invention by either (1) eliminating an element or (2) changing the function, manner, or result of an element.

PATENT PLANNING – MARKING. When a patent is filed, your invention is “patent pending.” You can, and in most cases should, mark your invention as such. It is not necessary to include the patent application’s serial number with any “patent pending” notices. When your patent issues, you can, and in most cases should, mark your product and product literature with the patent number to put others on notice that your invention is patented.

PATENT PLANNING – ONE-PAGER.





































If



And



Then



you have
a
product
that you can sell




you choose to
patent it



file patents
before launching
to protect U.S. and foreign patent rights.



you
invent
something
(i.e. anything new, useful, and
nonobvious)



you choose
to
patent it



you should keep
the invention secret until the patent issues. If
you must share it, then use confidentiality and nondisclosure
agreements with employees and non-employees.



you
invent
something



you choose
not
to patent it



you should keep
the invention a trade secret by keeping
it secret. If you must share it, then use
confidentiality and nondisclosure agreements with employees and
non-employees.



you
file
a patent application

whether non-provisional or
provisional



you want
foreign
patent

protection



you have one-year
from the earliest-filed patent application to file for foreign patent
protection.



you
file
a provisional
patent application



you want to
pursue
a
patent
on
the invention disclosed in the provisional
application



you have one-year
from the date you filed the provisional patent application to
“convert” it to a non-provisional application.



you
improve
something



it is
valuable



re-read this
one-pager, because many improvements
are inventions
that may be separately patentable.




PATENT PLANNING – COST FACTORS. The following factors impact the cost of your patent application:

  1. The complexity of the invention.
  2. Whether we conducted a formal patent search (lowers cost).
  3. Using our patent outline (lowers cost).
  4. Patent type – provisional vs. nonprovisional.
  5. How well attorney/client communicate electronically.

PATENT PLANNING – PRE-FILING SALES BY THE INVENTOR. The America Invents Act (AIA) went into effect in 2013, but not all aspects of the law have been worked out. Post-AIA, filing patents after a “launch” event introduces additional risk for the inventor. In particular, it is unclear whether pre-filing sales of a product by an inventor bar the inventor from getting a patent on the product. The USPTO currently says that they do not, but the courts have not yet spoken on this issue.

Post-AIA, being on-sale prior to filing an application is a bar to patenting. However, post-AIA also includes an “exception” that “disclosures” made by the inventor within one year prior to filing are not bars. This begs the question whether being on-sale is also considered a “disclosure” under the AIA. The USPTO includes an applicable section in their manual for examiners:

The AIA does not define the term “disclosure,” and AIA 35 U.S.C. 102(a) does not use the term “disclosure.” AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term “disclosure” as a generic expression intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).

This clarifies that the USPTO’s current position is that being “on sale” is a “disclosure.” Thus, the USPTO will not cite (1) sale activities, (2) by the inventor (3) that occurred within one year of filing. However, this is not an issue that has yet been settled by the courts, so if a future court holding indicates that “on sale” is not a “disclosure,” then any patent (or pending application) for something which was on sale prior to application would be void.

In short, if you launch your product before filing a patent, then we will not be able to file U.S. or foreign patents on it. But if your product/improvement is still a secret, or if you have future product/improvement plans, then we may be able to help.

PATENT PLANNING – PATENT PRIMER.

A patent gives the inventor the right to exclude others from making, using, and selling that invention 20 years from when the patent was filed.

Patents are designed to protect products/services and improvements to those products/services. So the best time to think about filing patents is after you’ve come up with the idea and before you’ve launched the product/service (or improvement). The best way to think about what you can patent is to think about what you can sell or license and how that offering is better/faster/stronger than the competition.

It is easy to over-spend on intellectual property (patents, trademarks, domain names). What makes sense is to get IP protection in the countries where you do business, where you intend to do business, or where potential acquirers do business.

PATENT PLANNING – PRODUCT-BASED PATENTING. Using our product-based patenting approach, our overall goal is to explain to the USPTO how your product is better/faster/stronger than the competition using features/benefits that we define, both in the present (i.e. the “prior art” section) and in the future (i.e. the “other embodiments” section).

PATENT PLANNING – PRODUCT IMPROVEMENTS. Improvements should be considered new inventions. If you file a patent on an invention and later make improvements to the invention, then the improvements may be separately patentable as separate inventions. You should file patents on improvements before launching.

PATENT PLANNING – SOFTWARE PATENTS. Software can be patented, but the courts have not been making it easy:

  • The 2007-04-30 KSR v. Teleflex Supreme Court decision made it easier for the USPTO to reject patents for being obvious (i.e. not new enough).
  • The 2010-06-28 In re Bilski CAFC decision made it more difficult for companies to secure business method or software patents.
  • After these cased, the USPTO published guidelines about how to apply these cases.

As a result of these cases and of the guidelines, we recommend that software-related patents be filed as provisionals, which gives you one extra year of patent pending and gives the law a chance to settle down. In light of KSR, if your invention consists of combinations of elements that exist in the prior art (either literally or equivalently), then we believe it will be extremely difficult – if not impossible – to secure a patent. Conversely, if your invention has the “nugget of newness” not found in the prior art, then it has a better chance of being patented. The bottom line is that software has been patentable for over a generation and remains patentable today.

PATENT PRELIMINARY AMENDMENT. Preliminary amendments can be used to defer the cost of writing a full set of claims. When employing this strategy, a preliminary amendment that includes a full claim set should be submitted within one year of the application’s filing date so that they will be examined.

PRIOR ART – DUTY TO DISCLOSE. Both the inventor(s) and their lawyer(s) have an ongoing duty to disclose information to the USPTO that is material to patentability as long as the patent application is pending (37 CFR 1.56, AKA Rule 56). All individuals covered by Rule 56 have a duty to disclose to the USPTO all material information they are aware of regardless of the source of or how they become aware of the information. A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.

PRIOR ART – HOW TO SUMMARIZE. We must carefully define what the competition (i.e. the prior art found by the patent search) does and what they do not do. If you know of specific patents, patent applications, publications, or websites that we can reference, then those must be included. Imagine that the invention has been turned into a product and you are writing the marketing literature for your product. Compare the features, functions, and benefits of the product to those of the competitors. Pay particular attention to how the invention overcomes the limitations inherent in the competitors’ products. In other words, what problem(s) is the inventor trying to solve? Chronologically, how have others tried and failed to solve the same or similar problem(s)? How does the invention now solve the problem(s)? Cite any publications or patents that discuss the problem(s) the invention solves or previous failed attempts to solve the problem(s). Briefly discuss what the reference does and what it does not do. Don’t include opinions, only include facts. The prior art section of a patent application is very important, so don’t worry if it takes many pages to describe all of the prior art. For each piece of material prior art that we know about, we ask you to provide one paragraph, saying what each does, and what each does not do – without mentioning your own product.

PRIOR ART – INFORMATION DISCLOSURE STATEMENT (IDS) – NOT ALLOWED FOR PROVISIONALS. It is against USPTO rules to submit an Information Disclosure Statement (IDS), with material prior art, for provisional patent applications because they are not substantively examined. Any such IDS will be returned or destroyed at the option of the USPTO. MPEP 609.

PRIOR ART – INFORMATION DISCLOSURE STATEMENT (IDS). Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith when dealing with the U.S. Patent Office. This duty includes a duty to disclose all information known to each individual to be material to patentability of the claimed invention. This duty is deemed satisfied by filing an IDS. Although it is possible to satisfy this duty without filing an IDS, it is in your best interest to cite all material prior art, because when patents issue, the documents listed in the IDS are printed on the cover of the patent as “References Cited,” and there is a presumption that the patent’s claims are patentable over these references. If any person substantively involved in the filing and prosecution of the application becomes aware of additional information material to the patentability of the claimed invention, then that person has a duty to disclose this information to the USPTO to avoid loss of patent rights. This is a continuous duty that applies to each pending claim of the application.

[OPTION 1 – IDS HAS NOT BEEN FILED]
We typically file the IDS after receiving the Filing Receipt from the USPTO, so that information from the Filing Receipt can be included on the cover sheet of the IDS (which makes it less likely that the IDS will get lost at the USPTO).

[OPTION 2 – IDS HAS BEEN FILED]
We have filed the IDS with copies of all relevant patents and other prior art.

PATENT PUBLICATION AND PROVISIONAL RIGHTS. (1) If you mark your product/service “patent pending,” and (2) if one of those pending patent applications is published, and (3) if a competitor has “actual notice” of the published patent application, and (4) if it is later shown that the competitor infringed the as-issued patent, and (5) if the as-published claims are “substantially identical” to the as-patented claims, then the patent owner can get damages in the amount of reasonable royalty dating back to the date of publication. These financial rights in published patent publications are called “provisional rights” (not to be confused with a “provisional patent application”) and explain why some applicants choose to have their applications published. As you can see, it is a high bar to get over. The award of “provisional damages” depends on whether or not the defendant had “actual knowledge” of the published patent application. Such knowledge does not depend on marking your products/services “patent pending” but such marking can help establish such knowledge. Absent such knowledge, a patent owner can only get damages back to the date the patent issued. After patents have actually issued/granted, it does make sense to say something like “U.S. and foreign patents pending and issued, including patent numbers PATENT1, PATENT2, and PATENT3.” (where “PATENT1” and the like are the actual numbers of your patents).

PUBLICATION – NONPUBLICATION RESCISSION. Nonpublication requests must be rescinded within 45 days of a foreign or PCT filing to avoid the U.S. application being abandoned. Rescinding the nonpublication request means that your U.S. application will not remain secret, and it will be published approximately 18 months from its priority date. Unlike international applications, U.S. applications can be kept secret (by filing a nonpublication request with the initial filing) unless/until a patent is granted. Because international applications must be published at 18 months, an inventor can only keep a U.S. application secret as long as there is no related international application.

PUBLICATION – NONPUBLICATION TO BE RESCINDED. Since you have decided to file for foreign patents, your previously filed nonpublication request for your U.S. patent application must be rescinded. Failure to file the nonpublication request within 45 days will result in the U.S. patent application going abandoned. After the nonpublication rescission is filed, your U.S. patent application will be published approximately 18 months from its priority date. We will prepare and file the form to rescind the previous nonpublication request.

PATENT PUBLICATION VS. NONPUBLICATION. The USPTO publishes patent applications 18 months after they are filed. Applicants may avoid automatic publication by filing a nonpublication request.

A. Nonpublication

The advantage of nonpublication is that if a patent never issues, then the invention can be kept a trade secret. But note that if the launch of your product/service means that the “secret sauce” has been revealed or that the product/service can be reverse-engineered, then there is little value in trade secret protection. We usually recommend electing nonpublication, since you can easily rescind a nonpublication request, but preventing the publication of an application for which nonpublication has not been requested is very difficult and cannot be guaranteed. If a foreign or PCT application is filed based on your invention, then the nonpublication request must be rescinded within 45 days of the foreign filing to avoid the U.S. application going abandoned. If you are uncertain about whether a patent will issue on your invention or whether you will file for foreign patents, then you should elect nonpublication.

B. Publication

The advantage of publication is that potential infringers can be put on notice sooner, and unpatentable prior art disclosed in your patent application will become published prior art (which will make it easier for the USPTO to find, since the USPTO is better at searching patent prior art than non-patent prior art). If the as-published application is substantially the same as the as-issued patent, then you could, theoretically, get damages back to the date of actual notice. In practice, however, the as-published applications are rarely the same as the as-issued patents. If you are confident that you will receive a U.S. patent or if you immediately intend to file for foreign patents, then you should elect publication.

C. Publication And Foreign Patents Vs. Trade Secrets And US-Only Patents

If you file foreign patents, then your U.S. application will become published 18 months from its filing date. If a U.S. application is currently under a nonpublication request, then the nonpublication request must be rescinded if you file foreign. So you can keep your pending patent application a secret (unless/until a patent issues) only by choosing a US-only patent strategy (i.e. no foreign filing).

D. Our Default Is Nonpublication

In short, unless directed otherwise, we file nonpublication requests for all U.S. nonprovisional patent applications. If a foreign patent application (or PCT application) is filed within a year of a patent application priority date, then we will rescind the nonpublication request to prevent the U.S. application from going abandoned, and the U.S. application will be published 18 months from its priority date.

PATENT SEARCH – STUFF YOU CANNOT FIND. A patent search cannot find provisional patent applications (which are not published), design patent applications (which are not published), utility patent applications with a filing date less than 18 months old (since utility patent applications are published 18 months from their oldest priority date), and any patent application under a nonpublication request. So a patent search cannot find everything. But you can find what you can find, and you should find what you can find. It is good and proper due diligence for startups to do a solid patent search. Like the bear that went over the mountain, you should see what you can see.

PATENT SEARCH – FORMAL VS. INFORMAL. A “formal search” is conducted by a third-party search firm and includes information that is not available via the USPTO’s website. An “informal search” is conducted by anyone using information that is available via the USPTO’s website. The USPTO’s website does not allow you access to everything that you’d need for a formal search, but it can be very helpful. Inventors who are in the early stages of thinking about patents can benefit from a formal search. If a patent (or patent application) that is exactly like your invention is found, then you can save a lot of time and money. If, on the other hand, nothing like your invention is found, then you may be interested in proceeding with your patent application.

PATENT SEARCH – HALF-LIFE. A patent search has a relatively short half-life. In other words, the longer you wait between the patent search and the patent filing, the less valuable the patent search is. Our goal is to get patents filed one month after your decision to file. So if you do intend to file, then please let us know so that we can maximize the value of the patent search to your patent application.

PATENT SEARCH – NOT AN OPINION LETTER. This is not a noninfringement opinion letter, invalidity opinion letter, or freedom-to-operate opinion letter (also called “clearance opinion letter”). In order to write an opinion letter, a much more detailed examination of each patent must be made. Specifically, a patent attorney (typically at a patent litigator) must analyze the “file wrapper” of each patent. (See Underwater Devices, 717 F.2d at 1390.) The “file wrapper” includes all of the correspondence between the inventor and the USPTO and provides essential clues about the scope of the patent in question. Inventors generally seek opinion letters only when a patent owner has accused them of infringement or when they have discovered a patent that they want to avoid. These types of opinion letters take a long time to prepare and can cost tens of thousands of dollars. As such, a patent search is not an opinion letter. It is only an analysis of whether the invention that is the subject of the patent search can be patented in light of the prior art.

PATENT SEARCH – TO SEARCH OR NOT TO SEARCH. Under U.S. law, there is a duty to disclose to the USPTO any prior art (including patents, publications, and other inventions) that is material to the patentability of your invention, but there is no affirmative duty to search for this prior art. As such, many large law firms discourage inventors from conducting a patent search. Their theory is that the less you disclose to the USPTO, the more likely it is that your patent will issue. While this may be true, it does an inventor little good to get a patent by pretending that prior art doesn’t exist.

On the other hand, there are many good reasons to conduct a patent search:

  1. If the search reveals prior art that is exactly like your invention, then your business can save a lot of time and money by not filing a patent application or by not pursuing the underlying product/service all.
  2. In our experience, the USPTO will take your patent application more seriously if you disclose patent and non-patent prior art. We have seen applications that fail to disclose prior art get the slow treatment at the USPTO.
  3. A patent that discloses prior art typically ends up being a strong patent, because when the patent issues, the cover of the patent includes “References Cited,” and there is a presumption that the patent’s claims are patentable over these references.
  4. A patent search helps us navigate the landmine of prior art, and navigating the prior art is the key to writing strong patents.
  5. Searching has a good ROI for startups (with one/two pieces of IP on which to hang their hats) but necessarily a good ROI for big companies, which files thousands of patents/year, times thousands of dollars/search, equals millions of dollars/year. Most “expert” advice on patent searching is targeted at these big companies, not at startups.
  6. Patent applications that we search issue at 2.5 times the rate of those that we do not search.

For all of these reasons, we conduct a formal patent search for every patent application.

PATENT SEARCH – SCOPE OF REVIEW. When we review prior art from a patent search, we are looking for two things. First, we want to determine if any patent (old or current) “anticipates” your invention, which could make your invention unpatentable. Second, we want to determine if your invention is within the legal scope of any current patent, which could make your invention infringe one or more patents.

PATENT SEARCH – SUMMARY. A patent search rarely turns up something that is exactly like the invention in question. Inventions, however, are defined by their elements. You can almost always design around prior patents by adding or changing elements in your invention, but doing so could result in a patent for your invention with a narrow scope of protection.

PATENT SPECIFICATION – “BEST MODE” REQUIREMENT. The “best mode” requirement means that you must disclose the preferred embodiment of the invention. For example, for software inventions, you may disclose many embodiments of the invention using a combination of programming languages and hardware platforms, but if you prefer a particular programming language, operating system, and/or computer hardware, then this must be disclosed.

PATENT SPECIFICATION – DRAWINGS. Drawings need to be at most 6″ wide by 8″ tall. Also, there should be no shading or grayscale, only black and white. Patent drawings, when possible, should not contain any English text. If patent documents contain text elements, then they will must be translated into foreign languages for any foreign patents that are based on the U.S. patent application. We generally rely on the inventor(s) to supply the drawings. Otherwise, we can have our patent drawing colleagues prepare the drawings based on your drafts.

PATENT SPECIFICATION – “ENABLING” REQUIREMENT. The “enabling” requirement means that you must disclose enough of the invention to enable someone skilled in the art to make and use the invention. For example, for software inventions, flow charts and state diagrams would enable a programmer to recreate a program, but it is not necessary to disclose source code.

PATENT SPECIFICATION – OTHER EMBODIMENTS. In order to increase the scope of your patent, we ask that you look into the future and tell us what your product looks like five years from now. We willl then include one paragraph about each of these future developments – except that we will write in the present tense.

PATENT SPECIFICATION – TEACHING. The “specification” portion of the application (i.e. everything except the claims) must clearly teach one normally skilled in the field of your invention how to make and use the invention, and, if it has multiple modes or versions, then it must disclose the best mode or version of the invention (i.e. the version that the inventor prefers).

PATENT TYPES – CONTINUATION PATENT APPLICATIONS. While the application is still pending, you can file a continuation application on any new claims that you choose to present. No new matter can be added to a continuation application, only the claims differ. The filing and priority dates of the continuation application are (generally) the same as the earlier-filed parent application. If you want to file a continuation application, then you must do so before paying the issue fee.

PATENT TYPES – CONTINUATION-IN-PART (CIP) PATENT APPLICATIONS. While the application is still pending (i.e. before you pay the Issue Fee), you can file a Continuation-In-Part (CIP) application. Unlike divisional applications, new matter can be added to CIP applications, which are typically used for improvements that have been made since the initial filing. An advantage of CIPs is that they enables you to overcome publications that came out after the initial filing date. A disadvantage of CIPs is that the twenty-year patent term starts with the original filing date, not the filing date of the CIP. Matter common to the CIP and the parent application will (generally) have the filing and priority date of the parent application. New matter will have the priority and filing dates of when the CIP is filed.

PATENT TYPES. There are several types of patents. These are the most common:

  1. Design patents are for products whose design is the thing that is unique.
  2. Provisional patent applications last for one year and are like filing an extension on your taxes. Provisionals are not examined by the USPTO.
  3. Utility (or nonprovisional) patent applications are “regular” patent applications. Nonprovisional patent applications are examined by the USPTO. It typically takes multiple years after filing for the USPTO to examine and respond to patent applications. The responses are called “Office Actions.” You get two rounds of examination (i.e. two Office Sctions) for your filing fee. You can always pay more fees to the USPTO to get more rounds of examination. Examiners get points for disposing of patent applications, where “disposing of” means either (1) allowing the patent or (2) getting the applicant to abandon the application. We always try to make it more attractive to the examiner to choose path #1.
  4. Foreign patents come in many flavors. The Patent Cooperation Treaty (PCT) is a centralized way of filing patents in multiple countries. Think of the PCT as a way of buying more time (like a provisional application) internationally. The most common route our clients to take to file foreign patents is as follows:
  • File a patent application in the U.S.
  • Within one year of the first U.S. application, file a PCT application.
  • Within 30 months of the first U.S. application, file in the European Patent Office (EPO) based on the PCT.

PATENT TYPES – DIVISIONAL PATENT APPLICATIONS. While the application is still pending, you can file a divisional application on any claims that you opted not to prosecute due to an earlier restriction requirement. No new matter can be added to a divisional application, only the claims differ. The filing and priority dates of the divisional application are (generally) the same as the earlier-filed parent application. The justification for the divisional application is that the USPTO is obligated to examine only one invention per application (and filing fee). If you want to file divisional applications (including any divisionals for possible design patents), then you must do so before paying the issue fee.

PROVISIONAL PATENT APPLICATIONS – ADVANTAGES AND DISADVANTAGES. While it is true that a provisional patent application need not include all of the formalities of a nonprovisional application, a nonprovisional application that claims the benefit of a provisional’s earlier filing date can only do so to the extent that the provisional discloses and supports the as-claimed invention. As such, strong provisionals are written to look and feel exactly like nonprovisional applications so that the only thing a patent attorney needs to is write the claims. You can still file a nonprovisional application that claims priority to any provisional application, but with a weak provisional as the foundation, there will likely new matter that must be added to the nonprovisional application. If the new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

Provisional patent applications – especially when filed pro se – can falsely raise expectations about cost savings and scope of protection. If you file a provisional application, then it needs to be considered the foundation upon which all future patent applications will be based. If the foundation is weak, then the follow-on applications will also be weak. The savings that might have been realized by filing a quick-and-dirty provisional application are lost when a patent attorney must rewrite everything and start from scratch.

It takes the same amount of work to properly draft a specification for a provisional patent application as it does for a nonprovisional patent application. Provisional patent applications always require a second patent filing within a year to keep your invention “patent pending,” delay examination (provisional patent applications are not examined by the USPTO), and ultimately end up costing more than simply filing a nonprovisional patent application. Alternately, we can file a nonprovisional patent application with one broad claim, and then within a year we can file a preliminary amendment to add additional claims. This approach combines the cost benefit of a provisional patent application with the prosecution speed of a nonprovisional patent application.

PATENT TYPES – PROVISIONAL PATENT APPLICATIONS. Nonprovisional patent applications must be filed within one year of provisional patent applications. When a Provisional Patent Application (PPA) is filed, you have “patent pending” status for your invention, but the PPA filing date starts a one-year period within which you must act to preserve the advantages of the PPA filing date. In short, if you want to keep your invention “patent pending” beyond the one-year anniversary of your PPA, then you will need to file a nonprovisional patent application within one year of your PPA’s filing date.

Trademark Law

TRADEMARK ARTICLES.

* The Who, What, Where, When, Why, And How Of Trademarks
http://www.clocktowerlaw.com/3133.html

* Just Say Moo – How To Name And Brand Your Product To Make It Stand Out From The Crowd
http://www.clocktowerlaw.com/3016.html

TRADEMARK DECLARATIONS. With each filing, the Applicant declares the following: “The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that: (1) he/she is properly authorized to execute this application on behalf of the applicant; (2) he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; (3) to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.”

TRADEMARK DISPUTE – APPLICATION – EXPRESS ABANDONMENT. The USPTO allows a trademark applicant to “withdraw” a trademark application by filing an “Express Abandonment.” Such filings are typically made as part of settling a dispute with a third party. Abandoning a trademark application does not mean, however, that you have abandoned the trademark itself. It simply means that you are no longer pursuing registered status for the trademark with the USPTO. If it makes sense, then you can file another trademark application for the same trademark in the future.

TRADEMARK DISPUTE – INFRINGEMENT – FAIR USE. The doctrine of fair use provides a defense to the infringing use of plaintiff’s mark where defendant’s use is solely to describe defendant’s goods. Fair use is backed by the public interest in allowing competitors to make free use of the English language to describe their goods. The common-law fair-use defense is embodied in the Lanham Act, 15 U.S.C. 1115(b)(4), which provides a specific defense to registrant’s exclusive right to use the mark where:

[U]se of the name, term or device charged to be an infringement is a use, otherwise than as a mark, … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin. The key to the fair-use defense is the concept of “use otherwise than as a trademark.”

Fair use applies so long as defendant’s use is descriptive, regardless of how plaintiff’s mark is classified. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995); Car-Freshner Corp. v. S.C. Johnson & Son, 70 F.3d 267 (2d Cir. 1995). See also the Supreme Court’s decision in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 1 1 1 (2004) (whose holding increased the evidentiary burden on the party alleging a trademark violation when the alleged infringer raises the defense of fair use).

TRADEMARK DISPUTE – PETITION TO CANCEL. A previously registered trademark for TODO is an obstacle to getting your trademark registered. If the registrant is no longer using the trademark or if you were using your trademark first, then filing a Petition to Cancel can remove this obstacle. In this case, it appears that the other trademark is no longer being used. Also, your use pre-dates the use of the other trademark. Based on these facts, you could file a Petition to Cancel for the other trademark. The cancellation process could and should occur in parallel with your application for registration.

TRADEMARK DISPUTE – REGISTRATION – SURRENDER. The UPTO allows a trademark registrant to “surrender” a trademark registration by filing a “Section 7 Surrender.” Such filings are typically made as part of settling a dispute with a third party. Surrendering a trademark registration does not mean, however, that you have surrendered the trademark itself. It simply means that you are no longer claiming registered status for the trademark with the USPTO. If if makes sense, then you can file another trademark application for the same trademark in the future.

TRADEMARK DRAFT – HOW TO REVIEW. Please review the draft for accuracy, noting especially any declaration statements. Any inaccurate statement leaves the trademark vulnerable to cancellation. We rely on your review to confirm that all of the information is correct.

TRADEMARK EXAMINATION SUSPENSION. The USPTO examines trademark applications in the order they are filed, but trademark rights are determined by the first to use (and filing a trademark application counts as “constructive use”). So a suspension letter does not mean that you have lost your trademark rights. A trademark application is typically suspended when (1) there is another similar U.S. application with an earlier filing date, (2) a U.S. application is based on a foreign application, and the U.S. application needs to be put on hold until examination of the foreign application is done, or (3) a third-party dispute (opposition or cancellation) is pending.

TRADEMARK EXAMINATION. If the USPTO determines that an application meets all filing requirements, then the application will be processed, and in approximately six months, we will hear from the assigned examining attorney. The examining attorney may ask for more information or may reject the trademark application, and we will have an opportunity to respond to any of the examiner’s questions.

CANADIAN TRADEMARK HURDLE – STATEMENT OF USE. For Intent-To-Use applications, an applicant must file a Declaration regarding use in Canada along with the registration fee.

For there to be proper use of the mark in association with goods, it is essential that (1) a bona fide commercial transaction has taken place in association with the goods, (2) that goods have been received by an entity in Canada, and (3) that the mark must be somehow associated with the goods at the time those goods are transferred to purchasers.

For there to be proper use of the mark in association with services, it is necessary for the services to have been performed or advertised in Canada. If services have been advertised only, then they must be available to be performed in Canada.

For the purposes of filing the Declaration, use of the mark must have occurred in association with each and all of the goods and services to be claimed. If the mark has only been used in association with some of the covered goods or services, then the applicant can file a partial Declaration, resulting in a registration covering only the used goods/services only, or registration can be delayed until such time as the mark has been put into use in association with all goods and services.

MADRID PROTOCOL – ADVANTAGES AND DISADVANTAGES. The Madrid Protocol’s main advantage is that it eliminates the high filing costs associated with filing separate national applications in each foreign country. The Madrid Protocol’s main disadvantage is that the rights granted by an international registration can be extinguished if its home application does not mature to registration or if its home registration is canceled during its first five years (a concept commonly referred to as “central attack”).

MADRID PROTOCOL – ENTITLEMENT TO FILE. In order to file a Madrid Protocol application, only one of the following statements can be selected, even if more than one is factually correct: (1) the applicant is a national of the United States; (2) the applicant has a domicile in the United States; or (3) the applicant has a real and effective commercial establishment in the United States. U.S. companies qualify under option #3.

MADRID PROTOCOL – OVERVIEW. Under the Madrid Protocol (a treaty that the U.S. joined in late 2003), a U.S. trademark application or registration can be the basis for an international trademark application, thereby allowing for centralized filing and administration of an international trademark portfolio. The Madrid Protocol does for international trademark applications what the PCT system does for international patent applications. Most industrialized nations are members of the Madrid Protocol. If you file a Madrid Protocol application within six months of your U.S. filing, then your international application will have the same filing date as your U.S. application. Otherwise (e.g. for already registered marks), your international application will have the filing date of your international filing. If international registration is important to you and if you want to maintain the benefit of your earlier filing date, then you should consider filing a Madrid Protocol application before the six-month deadline. For more information, see the website of the World Intellectual Property Organization (WIPO) (http://www.wipo.int/madrid/en/).

MADRID PROTOCOL – TRADEMARK RIGHTS. If your Madrid Protocol trademark application matures to registration, then your rights will be identical to the protection that would have resulted from national registrations in the Contracting States. An International Registration (IR) depends upon its parent (U.S.) application for a period of five years from the date of IR. During those five years, if the parent application is modified, canceled, or abandoned, then the IR is likewise affected. This concept – attacking the parent application to terminate the child application – is called “central attack” and is extremely rare, but an IR is vulnerable to central attack for five years. There are procedural steps that we can take, if necessary, to avoid the cancellation of an IR during these first five years.

TRADEMARK GOODS/SERVICES – CLASS NUMBER OMITTED. We have omitted the class number from the goods/services description because your trademark can fit into one or more classes. This was intentional. This allows the trademark examiner to make suggestions and feel like he/she is part of the process rather than an adversary.

TRADEMARK GOODS/SERVICES – MULTIPLE CLASSES. Since this application supports goods/services in more than one class, additional filing fees are required. Multiple-class applications are less expensive than filing multiple trademark applications. Multiple class applications, however, are also more complex, because specimens are required for each class of goods/services. Sometimes applicants choose to start with just one class for the goods or services that will be ready first so that they can get a Certificate of Registration as soon as possible.

TRADEMARK HURDLE – DESCRIPTIVE WORDS DISCLAIMED. Sometimes the USPTO requires that descriptive words in your trademark be “disclaimed,” which means that you’re not trying to prevent other businesses from using the descriptive words in their trademarks. We’ve included a disclaimer of the descriptive word(s) “TODO” in the application. Clocktower disclaims “Law” in its CLOCKTOWER LAW trademark because we’re not trying to prevent other law firms from using “Law” in their trademarks.

TRADEMARK HURDLE – DESCRIPTIVENESS – THE LOGO APPROACH. Because your trademark is at least partially descriptive, you could file it as a logo trademark. Your logo must have a distinctive non-text element such as your favicon (http://en.wikipedia.org/wiki/Favicon), which could be integrated with your logo. The distinctive element in our logo is the airplane, which is a good choice because it has nothing to do with patent/trademark law services.

You can create high-quality logos quickly with the crowd-sourced services (such as https://99designs.com/).‚Äč Once your logo has been created, you should integrate it into your existing website so that you can demonstrate proper trademark use. We can file the trademark application now as an intent-to-use (ITU) application (slightly more expensive but trademark rights earlier) or later after use has been established (slightly less expensive but trademark rights later). Absent direction from you to the contrary, we assume that you want to file as ITU.

TRADEMARK HURDLE – DESCRIPTIVENESS – THE “MICROSOFT WINDOWS” APPROACH. Since your trademark is at least partially descriptive, you could add your core brand to the trademark and file it as a combined mark. We call this the “Microsoft Windows” approach. If you have one strong registered trademark and are trying to register a second weaker (e.g. because it may arguably be descriptive) trademark, then it makes sense to consider the “Microsoft Windows” approach:

(1) First, register the strong trademark (Microsoft®).
(2) Second, register the combination trademark (Microsoft Windows®).
(3) Third, start using the second trademark alone (WindowsTM).
(4) Fourth, register the second trademark (Windows®).

This is a longer-term strategy that can be used to broaden your trademark rights and secure federal registration for trademarks that may not have been able to stand on their own initially. The “Microsoft Windows” approach also informs how we search trademarks of this variety, as we must look for instances of the (arguably) descriptive term alone. We do this because one cannot generally add a word to a registered trademark in order to register the combination. So if the term “Nike” is a registered trademark, then you could not register “Nike Plus” as a trademark. In short, it is wise to search words that you may think are descriptive, because the USPTO may not think so.

TRADEMARK HURDLE – FOREIGN WORDS DEFINED. We have included a statement that “TODO” means “TODO” in LANGUAGE. We do this because the USPTO Examiner must consider the meaning of foreign words when searching and because descriptive words – even if foreign – must be disclaimed.

TRADEMARK HURDLE – GENERIC. When a mark answers the buyer’s “What are you?” question, the mark is generic and invalid because it is identified with all such goods or services regardless of their producers. See 2 McCarthy 12:1 (J. Thomas McCarthy, Trademarks and Unfair Competition, 4th ed.). The following TTAB case cites McCarthy: In re Midwest Bus Corp., Serial No. 76393583 (March 17, 2006) [not citable] (“BYK-RAK” Generic for Bus Bike Racks) (http://thettablog.blogspot.com/2006/03/ttab-says-byk-rak-generic-for-bus-bike.html).

Generic marks refer to the “genus of which the particular product or service is a species.” Park ‘N Fly, Inc. v. Dollar Par and Fly, Inc., 469 U.S. 189, 194 (1985). A generic term is “the name of the product or service itself – what [the product] is, and as such . . . the very antithesis of a mark.” 2 McCarthy, supra, 12:1[1]. In determining whether a term is generic, courts have often relied upon the “who-are-you/what-are-you” test: “A mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’ ‘Who vouches for you?’ But the [generic] name of the product answers the question ‘What are you?'” Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999) (citations omitted).

TRADEMARK HURDLE – LIKELIHOOD OF CONFUSION – MARK WITHIN A MARK. Your mark consists of a third-party registered mark and additional wording. Such addition does not significantly alter the overall commercial impression created by your mark. Your services are highly similar to the registrant’s services. Hence the likelihood of confusion. Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods/services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP1207.01(b).

TRADEMARK HURDLE – LIKELIHOOD OF CONFUSION. In order for there to be a likelihood of confusion between two trademarks, the trademarks must be similar when considered in their entireties and in the context of the goods and services each trademark describes. In other words, both the trademarks and the product/services covered by the trademarks must be close enough.

When a trademark consists of distinctive and generic portions, the USPTO splits the trademark into pieces (called pseudo-marks) and searches all pieces. The USPTO puts more emphasis on the distinctive portion, as it considers the distinctive portion to be the “dominant portion” of the mark. Similarly, if a logo trademark features one phrase in large type, another in small type, then the large type is considered the “dominant portion” of the mark. Likelihood of confusion is analyzed by comparing the dominant portion of one trademark to another.

One way to think about the “likelihood of confusion” trademark issue is to flip the facts: (1) First, assume that you are the first user of the EXAMPLE trademark. (2) Second, assume that you have a registered trademark for EXAMPLE with goods/services you define. (3) Third, assume that all others are newcomers. Review their trademarks and ask yourself if you would have a problem with these newcomers treading on your turf. If the answer is “yes,” then they would probably also have a problem with your trademark application.

In this case, there are several trademarks that contain “TODO,” some of which have goods and services that are close to what you are offering. It helps to have the trademarks in different classes, but there can be a likelihood of confusion even if two trademarks are in different classes. You can search the goods and services manual on the USPTO’s website (https://idm-tmng.uspto.gov/id-master-list-public.html).

TRADEMARK HURDLE – ORNAMENTAL – T-SHIRT EXAMPLE. The issue with trademarks for t-shirts and other similar products is that the use is typically “ornamental” rather than “trademark” use, from the USPTO’s perspective. It’s the difference between:

  • a shirt that says “CLOCKTOWER” (ornamental)
  • the CLOCKTOWER brand of t-shirts (trademark)

One way to get over this hump is to add a tag to the products to brand them as CLOCKTOWER products. Here’s an example of how a popular t-shirt vendor in Boston does it:

* DON’T POKE THE BEAR
Click the “DOCUMENTS” tab then click “Specimen” to see the tag.
http://tsdr.uspto.gov/#caseNumber=85967452&caseType=SERIAL_NO&searchType=statusSearch

TRADEMARK HURDLE – SPECIMENS – B2B VS. B2C. The USPTO’s rules about how trademarks should be used as source-identifiers for goods are based on the Lanham Act (Title 15 of the U.S. Code, aka the Trademark Act), which was signed into law in 1947. For the most part, the USPTO assumes that “goods” are sold in business-to-consumer (B2C) channels and are offered for sale by being put on display in some store. The USPTO also understands that some websites can be “displays” and “stores” to the extent they both display and sell the goods. As such, acceptable specimens for goods include product labels, tags, containers, displays, instruction manuals, and photos of the mark as actually used on or in connection with the goods. The USPTO, unfortunately, has trouble with goods that are sold through business-to-business (B2B) channels. In B2B cases, catalogs, line cards, and websites are used to describe goods that may never be displayed or sold in any brick-and-mortar store or online store. More commonly, B2B goods are described through various publications (websites, line cards, spec sheets, and the like) but are actually sold by B2B salespeople. The challenge is trying to fit today’s B2B marketplace into the B2C world envisioned by the 1947 Lanham Act. We’ve tried to describe the specimens in a way that should be acceptable to the USPTO, but if the USPTO rejects your specimens, then we can either try to find new specimens that are acceptable or we can try to argue that the USPTO’s understanding of specimens for goods needs to be modernized for the reality of how goods are branded and sold in today’s B2B marketplaces.

TRADEMARK HURDLE – SPECIMEN LANDING PAGES. Sometimes website “landing pages” can be used as trademark specimens. This page (and the corresponding domain name) on our website is an example of how we do this for one of our tagline trademarks:

* Lawyers For Human Beings
http://www.clocktowerlaw.com/Lawyers-For-Human-Beings
http://www.LawyersForHumanBeings.com

TRADEMARK HURDLE – SPECIMEN PROBLEMS – GOODS. Your trademark (logo or words) needs to appear on the goods, on a tag on the goods, or on packaging containing the goods. Your website has the logo and describes the goods, but the two (logo/words + goods) never appear together as required by the USPTO. There are several ways to solve this problem:

  1. “TO ORDER.” If you sell directly to customers from your website, then you can add “click here to order” or “call/contact to order” to your product page, and that should suffice. The key is adding the words “to order” which transforms your website from an informational source to a “direct sales display.”
  2. TAGS. If you use product tags, then those can be added to the products as in this example:
  3. * DON’T POKE THE BEAR
    Click the “DOCUMENTS” tab then click “Specimen” to see the tag.
    http://tsdr.uspto.gov/#caseNumber=85967452&caseType=SERIAL_NO&searchType=statusSearch

  4. LABELS. If you have photos of boxes containing product, then all you need is your logo on a label on the box.
  5. SERVICES. We could focus on the services portion of your business (as opposed to the product portion), but the services must be described in more detail than they currently are on your website.

TRADEMARK HURDLE – SPECIMEN PROBLEMS – SERVICES. It was difficult to find a page on your website that the USPTO would accept as a specimen. The USPTO prefers specimens that say something like “FOOBAR is” followed by a description of the product/service. The closer the description of your trademark on your website matches the goods/services description in the application the better.

[OPTION]
Your logo is not being used prominently on your website. As such, the existing specimen may not suffice. If the USPTO rejects the specimen, then we can convert the application to intent-to-use and submit a specimen later.

TRADEMARK HURDLE – SPECIMEN. For initial and renewal applications, we need an example (or “specimen”) of the mark being used in interstate commerce as a trademark. In order for something to serve as a trademark, it needs to be a source-identifier for the specified goods/services. This means that the trademark should be prominent (in bold or otherwise, preferably with “TM” next to it) and should stand out from non-trademarked terms. The USPTO is very picky about specimens. Each trademark specimen must show:

  1. the trademark
  2. being used as a trademark
  3. on the goods (or, in the case of services, near the description of the services)
  4. that are described in the trademark application

For goods (including software), acceptable specimens include product labels, tags, containers, displays, instruction manuals, and photos of the mark as actually used on or in connection with the goods.

For downloadable software goods, an acceptable specimen may be a screenshot of the mark as actually used in the software.

For services, acceptable specimens include newspaper and magazine advertisements, brochures, billboards, handbills, direct mail pieces, menus, website screenshots, and the like. Since websites are inherently interstate and inherently relate to commerce, a good specimen would be a screenshot of a page from your website showing the mark being used as a trademark.

TRADEMARK HURDLE – STATEMENT OF USE. For Intent-To-Use applications, an applicant may file an Amendment to Allege Use (including a specimen) any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. Between publication and Notice of Allowance (NOA), no use statement may be filed. After a Notice Of Allowance (NOA) has issued, you have six months from the NOA date to file either a Statement of Use (SOU) or a Request for Extension of Time to File a Statement of Use (“Extension Request”). If you file an extension request, then you must continue to file a new request every six months until the SOU is filed. You may file a total of five extension requests. Failure to file a required document during the appropriate time period will result in the abandonment of the application. If you file all five extension requests, then a trademark application can be kept pending for up to three years from the NOA date.

TRADEMARK HURDLE – SURNAME – CONSENT OF INDIVIDUAL. Since the trademark includes a proper name, we need to include consent from the named individual. Please make sure that the full legal name is correct on the consent form. After you have reviewed this draft consent form, we will send you a final consent form for signature.

TRADEMARK HURDLE – USE DATES.

Date Of First Use Of Mark Anywhere. The date on which the goods were first sold or transported or the services first rendered under the mark if such use was in the ordinary course of trade. The date of first use of a mark is the date of the first such use anywhere, in the United States or elsewhere. This date may be earlier than, or the same as, the date of the first use of the mark in commerce.

Date Of First Use Of Mark In Commerce. The date on which the owner first used the mark in commerce, i.e., in interstate commerce, territorial commerce, or commerce between the U.S. and a foreign country. For services, the best date to use is the earliest date that you can prove that the mark was used on your website. We sometimes use archive.org for this. Please let us know if you can prove earlier dates than the ones we have included.

LOGO IN COLOR. We have presented the logo in color. Black-and-white marks are given more protection than color marks, because you can use any color and are not limited to just the claimed color(s). Ff the color is a distinctive feature of the mark and the differences in color are not as readily apparent when the logo is presented in grayscale, then claiming color makes sense. Claiming color can also make sense when you know for certain that you will be using only the claimed color(s). Since a mark is more narrow with a color claim, claiming color should help the application process go more quickly.

LOGO IN GRAY. We have presented the logo in grayscale, not color, to give you the broadest protection. This allows you to use whatever colors you want for your logo. If you claim a particular color, then your rights will be limited to just that color.

LOGO RESOLUTION. All logos must be 300 dpi, with a length and width of no less than 250 pixels and no more than 944 pixels (e.g., a valid pixel dimension is 640×480 pixels). Each dimension needs to be in the 250-944 range. The USPTO only accepts images in JPG format. We can convert just about any format that you use to the appropriate format, but we prefer to start with PNG. In short, we need a 300 dpi logo at least 250×250 pixels and no more than 944×944 pixels.

TRADEMARK NOTICE OF ALLOWANCE. The USPTO issues a Notice Of Allowance (NOA) for an Intent-To-Use (ITU) trademark application after the application has been examined and all of the Examiner’s objections have been overcome. In order to obtain a Certificate of Registration, a Statement of Use (SOU) must be filed that includes at least one specimen showing that the mark is being properly used as a trademark.

EXAMINER’S AMENDMENT. An Examiner’s Amendment is initiated by the USPTO Trademark Examiner and allows an applicant’s attorney and the Examiner to make small changes to a trademark application (such as typos) without the time and expense of a formal Office Action and reply. Examiner’s Amendments are typically agreed to by both parties over the phone.

OFFICE ACTION. The USPTO’s substantive response to a trademark filing is called an “Office Action” and typically includes a request for more information and/or a particular objection. There are many hurdles facing trademark applicants, some common, some rare. About 37% of trademarks receive one office action, about 7% receive two office actions, and about 0.7% receive three or more. You typically have six months to reply to an office action.

TRADEMARK OWNER. It is very important that the listed owner of the trademark be the same as the entity that is or will be using the trademark. This is especially important for intent-to-use (ITU) applications because ITU applications cannot be assigned to a third party (in order to prevent people from speculating in trademarks). Use can be established by licensing the trademark to a third party licensee, but that gets unnecessarily complicated. Note that a doing-business-as (DBA) company (for one person, a sole proprietorship; for multiple people, a general partnership) can be formed by filing a business certificate with your local town or city hall. Fees for DBA certificates are usually nominal and certificates are typically good for multiple years.

CLAIM OF OWNERSHIP. This trademark application includes a “claim of ownership” to your earlier applications/registrations. This should prevent the USPTO from citing one of your earlier trademarks against this one.

PETITION TO REVIVE. The United States Patent and Trademark Office (USPTO) considers a trademark application “abandoned” whenever the USPTO does not receive a timely-filed response to an examining attorney’s Office Action. You may file a Petition to Revive only if the applicant’s delay in responding to the office action was unintentional. 37 CFR 2.66. If you received the Notice of Abandonment, then you must file the Petition to Revive no later than two months from the mailing date of the Notice of Abandonment. If you never received the notice of abandonment, and if you have been “diligent” in prosecuting the application, then you may file a petition within two months from the date you became aware of the abandonment. To be considered diligent, you must have checked the status of the application every six months from the filing date of the application. 37 CFR 2.66(a) and 2.146(i). The petition must state: “Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.”

TRADEMARK PLANNING – BEST PRACTICES. Our general advice for trademarks is that you should use what you register and register what you use; that you should register your “big four” trademarks (name, logo, tagline, products/services); and that you should file in countries where you have significant business, partners, investors, or potential acquirers.

TRADEMARK PLANNING – TRADEMARKING COMPANY NAMES. Just drop the “Inc.” Many people incorrectly believe that company names cannot be trademarks. The legal name of a company cannot be a trademark (such as “Apple Computer, Inc.”) but the legal name almost always contains a trademark (such as “Apple”). So not only can you, in most cases, trademark your company name, but you should since it is usually your most valuable trademark. The same rule applies to company nicknames, assumed names, and “doing business as” names. For years people referred to Federal Express as FedEx, and in 1994 the company officially adopted its nickname as its legal name. So if your company name is “A Company that Makes Everything” but everyone calls it “ACME,” then you should get a trademark for your nickname – and you should consider changing your company name to ACME (http://en.wikipedia.org/wiki/Acme_Corporation).

TRADEMARK PLANNING – TRADEMARKING DOMAIN NAMES. You can register a domain name as a trademark if you are using the domain name as a trademark. Hotels.com (the company) uses its hotels.com domain name both as a domain name and as the HOTELS.COM trademark, which appears prominently in logos, in plain text, and in title pages on its website. Although trademark examiners are supposed to look at the left side of the dot for a domain name, domain names such as del.icio.us have been (correctly, in my view) read to be full words, namely “delicious” in this case.

TRADEMARK PLANNING – FILE BEFORE LAUNCHING. It is much more expensive to cure trademark problems than it is to prevent them. As such, you should fully vet any new trademark (for a company name, logo, tagline, product name, service name) by searching the trademark and (if the search is favorable to you) filing a trademark application. We have guided many clients through the expensive rebranding process. In an ideal world, you would be the first to use, first to file, and first to register your trademark. Disputes with third parties can occur when one party is first at one thing and the other party is first at another. Registering your trademarks as soon as possible can also help you secure your brand on the Internet, including domain names and social networking usernames.

TRADEMARK PLANNING – INTENT-TO-USE VS. USE-BASED. Trademark applications can be based on actual or intended use. Filing an Intent-To-Use (ITU) application is the quickest way to protect your rights to a trademark. You can file an ITU trademark application without a specimen, but ITU applications generally end up costing more, because there are two filings: the initial filing followed by a second filing showing use.

TRADEMARK PLANNING – JUNK MAIL. UTPTO trademark files are public. As such, you may receive offers from various vendors for trademark-related services. Some of these vendors make their mail look like official government mail, so be alert for possible scams. In short, unless a patent or trademark invoice is from us, then you can assume that it is a scam.

TRADEMARK PLANNING – LICENSE CLAUSE – NONEXCLUSIVE. The following trademark license clause is designed to be inserted into a larger contract, not to serve as a standalone license. “As part of this Agreement, Licensor grants to Licensee a nonexclusive, non-sublicensable, paid-up, royalty-free license to use the [TODO name of trademark(s)] Trademark(s) in connection with [TODO name of project] in [TODO OPTION in the Territory]. Licensee will not permit the quality of the Services with which Licensee uses the Trademark to deteriorate so as to adversely affect the good will associated with the Trademark. If either Licensor or Licensee deems it necessary to record this Agreement with the authorities of any jurisdiction in the Territory, then the other party agrees to execute any applications or documentation necessary or desirable to complete such recording. Licensee agrees not to claim or to assert any right of ownership in or to the Trademark or the goodwill associated therewith. Licensee shall not register anywhere in the world in its own name, or on behalf of any other person or entity, any of the licensed Trademarks. In the event either Licensee or Licensor learns that any Trademark pertaining to Service is being infringed in the Territory by any third party, it shall promptly notify the other of such infringement. Licensee shall have the right to act to terminate any such third-party infringement, including, without limitation, prosecuting a lawsuit or other legal proceeding, at Licensee’s own expense; and Licensee may retain any recovery it may receive as a result of its actions to terminate such infringement. Licensor shall fully cooperate with Licensee in any such action taken by Licensee, including, without limitation, agreeing to be joined as party plaintiff and approving any reasonable settlement agreement achieved by Licensee, and shall be reimbursed by Licensee for all reasonable expenses incurred in connection therewith.”

TRADEMARK PLANNING – MARKING AND USAGE. Trademarks should generally be used as adjectives to describe the generic thing to which they relate. Apple does a good job of describing how to use its trademarks (https://www.apple.com/legal/intellectual-property/trademark/appletmlist.html). Using the mark with a generic term helps prevent the mark itself from becoming generic. It is customary to use the trademark with the generic term the first time that you mention it and without in subsequent mentions. Also, you should use the circled-R (®) (as opposed to “TM”) symbol to indicated that your trademark has been registered with the USPTO. In summary, in order to preserve your trademark rights, you should be using the mark, marking the mark, and encouraging others to do likewise.

TRADEMARK PLANNING – MATERIAL VS. MINOR CHANGES. After you have registered a trademark, the registration must be periodically renewed. In order to renew a trademark registration, a new specimen (proof of use) must be submitted. Only minor changes to the trademark are allowed, and any “material” changes require that a new application be filed. For logo trademarks, there is more flexibility, so we have seen a bee logo with a slightly sharper stinger approved, an apple with an added leaf approved. The same applies to the “literal elements” (i.e. the words) in the logo, where sometimes it looks like there is a space (due to kerning and the like) and sometimes not. For word trademarks, there is essentially zero flexibility, so we have seen the addition/deletion of a space rejected as material, the substitution of “&” for “and” rejected.

TRADEMARK PLANNING – PROCESS NOT EVENT. Protecting your company’s trademarks is a process, not an event. Registering your trademarks and domain names gives you options for enforcing your rights. Marking your trademarks puts others on notice that you intend to defend your trademarks. Watching (or monitoring) your trademarks is a good way to protect your trademark investment.

TRADEMARK PLANNING – STEALTH MODE. Since you are in stealth mode, we have drafted the goods/services description broadly so that you don’t inadvertently give away your product plans when your application is published. The goods/services description can be narrowed (but not broadened) during prosecution, so we will narrow it appropriately after your product launches.

TRADEMARK PLANNING – USAGE GUIDELINES. In order to help defend your trademarks, you should adopt good trademark usage guidelines. Apple’s guidelines remain among the best (https://www.apple.com/legal/intellectual-property/guidelinesfor3rdparties.html). We also have a version (trademark-usage-guidelines-memo.doc).

TRADEMARK PLANNING – WATCHING. We can help you maintain trademarks by monitoring various sources for potentially conflicting trademarks and domain names. We offer trademark watching services similarly to how we offer patent search services. First, we hire a research firm that specializes in providing “trademark watching” (also called “trademark monitoring”) services to law firms. Then, we add value to what the research firm does by explaining to you what their reports mean. Finally, we can help resolve any identified problems.

TRADEMARK PLANNING – DON’T REDESIGN YOUR WEBSITE. Trademark applications and registrations frequently rely on a specimen (proof of use) from your website. If you are considering redesigning your website, then please contact us so that we can advise you how to do so without jeopardizing your trademark portfolio. If you redesign your website without considering trademarks, then you may not be able to register pending trademark applications, and you might not be able to renew existing registered trademarks. Website redesign is a leading cause – but not the only cause – of trademarks inadvertently being put at risk (http://www.clocktowerlaw.com/5313.html).

TRADEMARK PLANNING – WEBSITE TERMS AND CONDITIONS. Website Terms and Conditions (TOC) pages are a good place to consolidate notices about patent, trademark, and copyright rights. For an example, see Clocktower’s website (http://www.clocktowerlaw.com/fine-print).

TRADEMARK PLANNING – WORDS VS. LOGOS. A word trademark protects against other trademarks that sound like the word. A logo trademark protects against other trademarks that look like the logo. Ideally you should register both. For example, we have CLOCKTOWER LAW as a word logo and also have our airplane logo trademarked, since we want to stop any other law firm from having “Clocktower” in its name or a retro airplane in its logo. When we search trademarks, we search for both look-alike and sound-alike variants, including misspellings. A misspelling is a distinction without a difference, so QUICK and KWIK are considered identical from a trademark perspective. In many cases, an intentional misspelling will cause more headaches (from a trademark perspective) than any perceived benefits (from a marketing/sales perspective).

TRADEMARK POWER OF ATTORNEY ENDED. The USPTO considers a power of attorney to end with respect to a particular trademark application when the mark is registered, when ownership changes, or when the trademark application is abandoned. TMEP 604.02. Although the USPTO considers that POA has ended, we will continue to remind you about trademark renewals.

PRELIMINARY AMENDMENT. Preliminary amendments, as the name suggests, can only be filed before the USPTO has acted on the application. One case when it makes sense to file a preliminary amendment is when there are multiple pending trademark applications and an examiner has acted on an earlier one but not on a later one. In this case, amending the later-filed application can preemptively avoid the same problems that the earlier-filed application encoutered.

PUBLICATION AND OPPOSITION. If the USPTO Trademark Examiner raises no objections to the registration of your trademark, or after all such objections have been satisfied, the Examiner approves the mark for publication in the Official Gazette, a weekly publication of the USPTO. Any third party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an Opposition to Registration or a Request to Extend the Time to Oppose. An opposition is similar to a proceeding in a federal court, but it is held before the Trademark Trial and Appeal Board (TTAB), a USPTO administrative body. If the registration is opposed, and if you desire to fight the opposition, then we would hire a firm that specializes in TTAB proceedings. If no opposition is filed or if the opposition is unsuccessful, then a Certificate of Registration will issue for use-based applications, or a Notice of Allowance will issue for intent-to-use applications.

CERTIFICATE OF REGISTRATION. It is difficult to say exactly how long it takes from the filing of your application to the receipt of a final Certificate of Registration, because numerous factors can arise during examination that can lengthen the process. However, if there are no substantive or procedural problems and no third party files a Notice of Opposition, then it may be possible to obtain a Certificate of Registration within 11-13 months from the application’s filing date.

TRADEMARK REGISTRATION – PRINCIPAL REGISTER VS. SUPPLEMENTAL REGISTER. The USPTO has two lists (or Registers) of trademarks. The Principal Register is for marks that are distinctive. The Supplemental Register is for marks that are not (or not yet) distinctive enough. The benefits of registration in each is as follows.

Registration in the Principal Register provides:

(a) Notice to others that the mark is taken.
(b) Right to put the “circled-R” symbol (®) after the mark.
(c) Right to recover triple damages and attorneys’ fees from an infringer.
(d) Exclusive ownership of the mark (excepting prior use).

Registration in the Supplemental Register provides:

(a) Notice to others that the mark is taken.
(b) Right to put the “circled-R” symbol (®) after the mark.
(c) Right to recover triple damages and attorneys’ fees from an infringer.
(d) Exclusive ownership of the mark (excepting prior use).
(e) Right to re-apply for registration in the Principal Register after five years of continuous use.

TRADEMARK REGISTRATION VS. TRADEMARK USE. No trademark is perfect. Even if you get a registered trademark, prior users of registered and unregistered trademarks can come out of the woodwork to cause problems. The rights to register a trademark and to use it are separate but related rights. The USPTO determines which party gets to register a trademark, and applications are examined in the order in which they are received. Courts determine which party gets to use a mark, and the first user of a mark has superior rights to a subsequent user. Filing an intent-to-use trademark application also establishes a de facto use date that is the application’s filing date. When the first user is the second filer, the first user (or their law firm) may contact the second user to notify them of the conflict (sometimes in a friendly manner, sometimes via a cease and desist letter). In many cases, the second user will withdraw (i.e. explicitly abandon) their trademark application instead of fighting a losing battle. Before filing, a trademark search can help find potential problems. After registration, a trademark watch can help find potential problems.

TRADEMARK RENEWAL – ASSIGNMENT FILED. Your company changed names since the registration of this trademark. Renewal applications must be filed in the correct name of the company. As such, we filed an assignment to correct the name on file with the USPTO.

TRADEMARK RENEWAL – YEAR 5 VS. YEAR 10. There are multiple types of renewals that must be made at year 5 and at year 10.

Declaration Of Incontestability Of A Mark Under Section 15 (year 5). To claim that a mark registered on the Principal Register is incontestable, registered trademark owners must file a Section 15 Declaration of Incontestability (DOI) once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under 12(c), and the mark is still in use in commerce. The DOI may be filed within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under 12(c). The “incontestable” status means that the registration is (1) conclusive evidence of the registrant’s ownership and exclusive right to use the trademark, (2) immune from attack on the basis of prior use, and (3) immune from attack on the basis of descriptiveness. Because incontestable status confers valuable rights, we file for incontestable status as soon as you qualify to do so.

Declaration Of Use Of A Mark Under Section 8 (year 5 and every 10 years after registration). Registered trademark owners must file a Section 8 Declaration of Use (DOU), specimen, and a fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration. For an extra filing fee, you may file within the six-month grace period following the sixth (6th) anniversary date. Failure to file a section 8 declaration will result in cancellation of your trademark registration. If you intend to keep protecting your trademark, then we recommend filing the DOU at the 5-year point or shortly thereafter.

Renewal Application (every 10 years after registration). Registered trademark owners must file a Renewal Application (RA) on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration and each successive ten-year period thereafter (or, for an extra filing fee, you may file within the six-month grace period). Also, registered trademark owners must file a Section 8 declaration within the same period (or, for an extra filing fee, you may file within the six-month grace period following the registration expiration date). Failure to file this document will result in cancellation/expiration of your trademark registration.

There is no “undo” for missing trademark renewal deadlines. If your registration has lapsed, then your best bet is to start over with a new trademark application.

TRADEMARK RENEWAL. Between the five- and the six-year anniversary of the mark’s registration, you should file an Affidavit of Continued Use to keep the registration in force. After that, renewals are due at year ten and every ten years thereafter. If a registered trademark has not been renewed by the end of the six-month grace period, then the registration will be canceled. This is a statutory requirement that cannot be cured by petition or payment of additional fees unless USPTO error caused the registration to be cancelled.

TRADEMARK SEARCH – CLEARANCE. We recommend that you proceed with using a mark only when (1) you can secure all of the generic top-level domain names for the mark and (2) there are no confusingly similar marks in the USPTO’s trademark database. Registered trademark owners have many options for enforcing their rights, including:

  • Opposing trademark applications.
  • Canceling trademark registrations.
  • Suing for infringement based on federal trademark law.
  • Suing for dilution based on federal trademark law.
  • Suing based on state unfair competition law.
  • Suing based on state trademark law.
  • For domain names, suing for monetary damages under the Anticybersquatting Consumer Protection Act (ACPA).
  • For domain names, filing for transfer of a domain name under the Uniform Domain Name Dispute Resolutions Policy (UDRP).

When faced with the problems of unavailable domain names and conflicting trademarks, the best course of action is usually to pick a new name.

TRADEMARK SEARCH – DOMAIN NAMES. We recommend that you register your company name, product names, and trademarks as domain names in the most important generic Top Level Domains (gTLDs) (including .com, .net, and .org). You should also consider registering common misspellings, including singular and plural variations. Registering multiple domains is cheap insurance against possible infringing use. Also, we recommend registering domains in the name of your company using the exact same contact information for each domain. This helps prevent domain name theft.

For any given domain name, there are hundreds of unregistered typo domains. At a minimum we recommend registering the following variants of your domain name (using example.com as the example domain name):

  • exampleS.com (singular/plural variants)
  • WWWexample.com (www with dot missing)
  • exampleCOM.com (com with dot missing)
  • WWWexampleCOM.com (www and com with dots missing)
  • common misspellings

TRADEMARK SEARCH – GOOGLE. We have also searched Google for evidence of prior use of the trademark. The USPTO determines the right to register a mark, but common law (and ultimately courts) determines the right to use a mark. The best case scenario for a trademark applicant is to find (1) no confusingly similar trademarks in the USPTO’s trademark database and (2) no confusingly similar trademarks in use on the Internet.

TRADEMARK SEARCH – LOGOS. Searching logos is more time-consuming than searching words, because matters of confusion are typically based on first impression. Similar registered or pending trademarks may make a rejection based on likelihood of confusion more likely. Similar abandoned trademarks may contain clues about why a mark was rejected and whether it can be registered at all.

TRADEMARK SEARCH – NOT AN OPINION LETTER. This is not a noninfringement opinion letter, invalidity opinion letter, or freedom-to-operate opinion letter (also called “clearance opinion letter”). In order to write an opinion letter, a much more detailed examination of each trademark must be made. Specifically, a trademark attorney (typically at a trademark litigator) must analyze the “file wrapper” of each trademark. The “file wrapper” includes all of the correspondence between the applicant and the USPTO and provides essential clues about the scope of the trademark in question. Companies generally seek opinion letters only when a trademark owner has accused them of infringement or when they have discovered a trademark that they want to avoid. These types of opinion letters take a long time to prepare and can cost tens of thousands of dollars. As such, a trademark search is not an opinion letter. It is only an analysis of whether the trademark that is the subject of the trademark search can be registered in light of prior trademarks.

TRADEMARK SEARCH – STRENGTH. Trademarks need to be distinctive in order to qualify for registration in the Principal Register. Some marks may be able to acquire distinctiveness and can be placed in the Supplemental Register. The following categories of marks are listed from strongest to weakest.

  • “Fanciful” marks are the strongest trademarks. Fanciful marks consist of one or more made-up words. Examples include EXXON, KODAK, VERIO, and XEROX.
  • “Arbitrary” marks are very strong trademarks. Arbitrary marks consist of real words that have nothing inherently to do with the product/service being sold. Computers have nothing inherently to do with apples, so APPLE is a good trademark for a computer company. Examples include APPLE (computers), AMAZON (books), and SUN (computers).
  • “Suggestive” marks are strong trademarks. Suggestive marks consist of real words that suggest a quality that the company or its products/services stand for. Greyhounds suggest speed, so GREYHOUND is a good name for a bus company.
  • “Descriptive” marks are weak trademarks. Examples include COMPUTER EQUIPMENT STORE, WORD PROCESSOR, and BOB’S BOOK STORE, which is a poor name for a bookstore because it is descriptive, and all “Bobs” should be able to open their own book stores without fear of litigation.
  • “Generic” marks are those that were once distinctive but have lost their distinctiveness and now refer to a category of goods/services instead of a particular company’s products/services. Examples of “genericized” former trademarks include ASPIRIN, LINOLEUM, ESCALATOR, and NYLON.

TRADEMARK SEARCH – USERNAMES. Usernames are as important as domain names. You should secure your brand on major other social networks (http://www.clocktowerlaw.com/3067.html). See the attached for a snapshot of the availability of your trademark on various social networks.

TRADEMARK SEARCH. A trademark search can provide information about potentially conflicting marks. Our trademark search covers the USPTO’s trademark database as well as Internet databases. The search results provide clues about how the USPTO may respond to a trademark application, but if the USPTO or third-party trademark owners feel that any two marks are too similar, then your trademark can be delayed, prevented from registering, or canceled after registration.

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