Let’s talk about filing a TM application without any help first.
There is no doubt that any US person, including legal entity having address in the U.S., can file a trademark application without absolutely no help.
There is no doubt that any US person, including legal entity having address in the U.S., can file a trademark application without absolutely no help.
A grant of patent without a single rejection is quite uncommon. One of the reason is that most applicants want to claim broadest possible for the greatest protection of law.
To maximize the scope of your claim, you don’t want to include unnecessary details in your claim. Let’s take a look at an example (from a real patent). You don’t have to read it through, just scheme.
[an excerpt from US8143982B1, bold added]
1. An accessory unit, comprising:
a hinge span, the hinge span including a first magnetic element suitable for magnetic attachment to a host unit having a display; and
a flap portion pivotally connected to the hinge span, the flap portion comprising:
a plurality of segments all but one of which are substantially the same size and wherein one segment is wider than the other segments, wherein each segment includes a pocket that is about the same size as the corresponding segment,
a rigid insert incorporated into each pocket, the rigid insert providing support for the associated segment, and
a folding region between each of the segments arranged to allow the plurality of segments to fold with respect to each other, wherein a first segment is located at a first end of the flap at the hinge span and includes a magnetically attractable element and wherein a second segment is located at a second end of the flap opposite the first end and includes a plurality of magnets, wherein in a first folded configuration the flap portion forms a triangular structure when the first and second segments are folded one atop the other such that at least one of the magnets in the second segment magnetically attract the magnetically attractable element in the first segment, wherein the first and second segments that are folded one atop the other and magnetically attached to each other form one side of the triangular structure that is about equal in width to a second side of the triangular structure each of which is narrower than a third side of the triangular structure.
[end of claim 1]
By looking only at highlighted words, you can figure out that it has two main components, a hinge span and a flap portion, and the flap portion has three sub-components, a plurality of segments, a rigid insert for each segment, and a folding region between each of the segments.
What do you make out of it? Well, it’s iPad Smart Cover by Apple.
A hinge span is described as follows: including a first magnetic element suitable for magnetic attachment to a host unit having a display.
It doesn’t say a magnet or a tablet PC. Instead, it says a magnetic element suitable for magnetic attachment and a unit having a display, respectively. If it said a magnet, someone can make a cover with a lodestone instead of a magnet and avoid infringement. The same thing goes to the tablet PC.
But, why not just an element suitable for attachment? I think that would be the track which leads to the obviousness trap. Granted it would expand the scope, it also eliminates an outstanding element from the invention. Every cover has some element for attachment.
what about a unit having a display? Why not a unit having a flat surface? Well, Apple is an electronics company, and it probably wouldn’t make a cover for your photo frame. In that sense, a display pretty much is everything that needs to be covered in Apple’s patent.
Skipping forward to the bulky section, a folding region, can you guess why in the world it is so long? Well, you guess it’s important, right?
This is the section that makes this cover distinct from any other cover design within people’s mind (at the time of invention, of course). It describes how the segments of a cover fold and magnetically bind together to form a rigid stand that can support a host unit. So, you have to describe it fully.
By the way, a cover that folds into a stand is not an invention by Apple. Search Google Patents “US8960421B1” and you will see a prior patent filed by Incase Designs Corp. that has almost identical folding functionality.
Let’s take a look at a claim by Incase Designs [excerpt from US8960421B1].
1. A cover for an electronic device comprising:
a rectangular front cover comprising first, second, and third panels between a first edge and second edge of the front cover, wherein the first panel is closer to the second edge than the second and third panels, the second panel is between the first and third panels, and the third panel is adjacent the second panel,
between the first and second panels is a first hinge, and
between the second and third panels is a second hinge;
a back cover, coupled to the front cover, which will retain the electronic device in the case; and
[It goes on, but let’s stop here.]
So, a flap portion of Apple patent can’t overcome an obviousness rejection by itself despite the elaborated manner of how segments fold and get attracted together to form a stand; that’s where the magnetic element for attachment comes into play. This magnetic element obsolete a back cover, which is listed in the Incase Designs’ patent claim.
Here’s an important question: if Incase Designs knew a way to make a cover without a back cover, would its claim include the back cover element in the claims?
You can read more about this in “Including an unnecessary element in the claims.”
After a careful thought and drafting an application, you can still get a rejection based on obviousness. In this case, you can try again, or get help from patent attorneys.
Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s). Roughly speaking, it should be an all-inclusive manual for your invention.
You’re disclosing your invention to the public, and in exchange you’ll be granted a monopoly for a limited time. To ensure fairness in this deal, you’re required to fully and comprehensibly disclose your invention without hiding anything.
If you want to hide something from the public, you’re free to do so by opting out from disclosing it, in which case you shouldn’t claim it either. However, you shouldn’t attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.
For example, let’s say you know two ways to make your invention. You know one works better than the other, but you don’t want people know about the better one. If you disclose the other one only, the patent will be held invalid.
You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can’t patent it.
Although you can learn a lot from the patent applications you found during your clearance search, it’s still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don’t need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).
And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.
By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would’ve noticed the peculiar but consistent writing style. In fact, you must follow a specific set of rules created by the USPTO when writing claims.
You shouldn’t worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don’t be creative and get rejected.
Patent applications often have multiple claims, and a claim likely has a multiple components.
No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.
That’s another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.
To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes “comprising” and “consisting.” If you say your fuel additive consists of chemical A and chemical B, you are telling that there’s no other chemical than A and B. “Comprising” is, on the other hand, open-ended.
Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it’s more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn’t take too long.
It’s just that the law firms, boutiques, or their likes practicing patent law are focused on serving bigger mostly corporate clients rather than individual inventors.
When it comes to an invention which is more about an idea and less about technology, you don’t need PhDs spending hours reviewing the art let alone attorneys.
In addition, firms charge more money per hour for small clients than those bigger corporate accounts that generate vast volumes. You can’t really blame them as that’s how business works, but it’s unfortunate that there are few options for individuals and small businesses.
It won’t be easy to find them because the internet search usually shows heavily advertised service first, which can be cheap but not necessarily a better deal. At all times, make sure that you’re working with a patent attorney/agent who’s registered with the USPTO.
There’s utility patent, which is basically what you think patent is. And there’s design patent, which is somewhat unpopular but got the attention when Apple sued Samsung for infringing its design patent.
These two types likely cover all your needs. If you want to protect the cosmetic features of your product, consider design patent. For all other cases, you’ll be thinking a utility patent.
To add, if your design feature has a utility in it (i.e. when your new design serves a function), then you will probably have to go with a utility patent.
Even if nobody really patented an idea, the idea might be known to many as a common sense or to a small number of people known as experts or scholars. It doesn’t matter how many people know it.
When you go into detailed analysis, it gets more complicated. Let’s say your company is the first to sell a mouse pad made of bamboo and you want to patent it.
Unfortunately, it’s not. The law will not only look at the things that already exist but also guess what can be done with existing technology and skills. I mean bamboo is a sturdy and hard material that can be easily shaped into a small plate. The law will likely say that your new idea of making a mouse pad with a bamboo was obvious. Basically it’s saying that “we don’t need an inventor to do that.”
The law provides a short list: process, machine, manufacture, or composition of matter. If you think about it, it’s pretty broad. In the above example, we discussed a bamboo mouse pad as a manufacture, which we concluded not patentable.
However, you may have a ground-breaking manufacturing method to process a raw bamboo tree into a large plate that can be easily cut into any shape of mouse pads. Well, that might be a patentable “process”.
We can go further. If you designed and made a machine for the processing of raw bamboo trees, you may patent the machine as long as it satisfies other requirements. As you can guess, inventors often patent a manufacture, the process of making it, and the machine that performs the process at the same time.
This is usually not a concern because the law doesn’t ask for a good one. If you can find a single use for your invention, that’ll be fine. The use doesn’t have to be new or better than others. In fact, even if your method of processing bamboo turned out to be too expensive to make economic sense, it still has a utility in the eye of the law.
Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.
On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.
Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.
The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.
By carefully filling out all the required blanks and agreeing to go paperless in communicating with the USPTO, you can reduce your application fees from $325 to $225 (TEAS plus).
TEAS RF allows you to enter goods/services description in your own words for a slightly heftier fee, but it is not recommended if you want the examination process to be as quick as possible. If you pick one from the Trademark ID manual (by USPTO), the examiner will unlikely oppose to the propriety of the description.
Not all questions are straightforward. When you’re in doubt, always consult USPTO guidelines. Always consult a professional before making decisions. All you learned today may be a tip of an ice burg.
Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.
For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.
You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).
Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.
What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.
However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.
Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.
Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S. Of course, the other way around is true.
When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.
Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim “patent pending” from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.
You discloses something other people don’t know, and in exchange other people can’t use it for a limited time period (about twenty years) unless you allow them. It’s a win-win. You don’t have to worry about someone else stealing your idea, and the others can learn and improve your invention.
Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there’s no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office (“USPTO”) issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don’t go to the USPTO (nor to a law enforcement agency) but to courts.
It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.
Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.
Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.
|Do it yourself||Professional Help|
|Mark||Your choice of wording and design||Likely a better wording and design|
|Registration||online trademark search/registration||via your representative|
|Cost||USPTO fees + $100 commercial service fees||USPTO fees + up to $2,000 attorney fees + design cost|
Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.
There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.
A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.
For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.
Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.
Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?
Thus, it’s is a rule of thumb that a standard character format affords a better protection.
Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.
Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.
However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.
But it should be noted that stylized/design marks have their own limitation. If Japanese Fever , I say this one differs in style so much to escape from a potential trademark infringement claim.
You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.
You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.
You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.
So, figure out what’s the strength and weakness of your mark, and then choose wisely.
When there is problem with your trademark application, the Office will issue an OA. There could be multiple instances of OA per application while many trademarks get registered without any.
Sometimes, a simple change to your application can fix the problem, so the only thing you need to is agreeing with the change. But often you must rebut the rejection with legal arguments. This provides you of an opportunity to clarify and strengthen your application (and the trademark), but a wrong response could render the trademark unenforceable or nominal.
You must understand the reason for rejection clearly and respond to every issue to the full extent. You might find it helpful to review similar OAs and corresponding responses from another applicants on the TSDR (Trademark Status & Document Retrieval), which is open to the public and FREE. Although you can borrow their legal argument and logic, you must apply them to your facts.
Sometimes it’s not a good idea to proceed with responding office actions. Use free consultation to figure out whether it’s a good idea or not. You may also get a rough idea about cost and timeline.
By the time Apple Inc. debuted iPhone in January 2007, the prefix “i” had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.
Lesser known than Apple, however, there was a startup called InfoGear Technology Corporation, which developed an internet phone technology, called “iPhone.”
There is a “strong mark” and a “weak mark”. You don’t need to know all legal distinctions as to different types of marks, but you want to have a strong mark, right? Here’s a shortcut to get to the goal.
Many low-end products tend to say exactly what it is. On the other hand, high-end products are very subtle. Have you ever bought a crappy good carefully wrapped inside a sophisticated package? Well, more likely than not you weren’t careful.
The thing is there is a tiny market for a fancy looking crappy product.
In other words, having a fancy name does rarely fly for a low-end product. You should name your product for what it is. However, that doesn’t prevent you from growing a great brand name.
When you run a business, there is a chance that one day you receive a letter claiming that you are infringing someone else’s trademark or patent rights. It’s commonly called a “Cease and Desist Letter.”
When it comes to trademark (or servicemark), brand names, symbols, and logo designs are the first things to come to your mind. However, there are other types of trademarks that are protected. For example, a sound or packaging is also protected by the trademark law.
Have you been to a Burger King restaurant in Mattoon, Illinois? I mean the other Burger King restaurant. There is a restaurant called Burger King, which has nothing to do with Burger King franchise.
While there’s innovative product like iPhone, most new products are improved versions of old products.
“Everyone copies everyone”
There is often a grey area between innovation and imitation when it comes to a highly competitive industry. Nevertheless, you often hear about patent infringement lawsuits and trademark disputes.
Especially in the U.S., lawsuits and other legal disputes are a serious problem for business owners. If you once get served with a complaint, you cannot simply ignore it because your failure to respond will result in default judgment against you. And attorney’s fees that easily go around a thousand of dollars an hour will make you dizzy. As it happens, most accused companies end up settling rather than challenging the allegation of wrongdoing.
Most clients come to me after their products reached the market. In fact, that’s when you know for sure that your product has the potential to be something. If not, why invest in registering trademark?
This article contains fictional scenarios that include facts and legal issues that are created for an explanatory purpose. Any of those facts and legal issues including legal conclusions may not be true when applied to your case. Please seek a legal advice or counsel if you need any help.