Patents, Trademarks, & Technology
Our experienced patent and trademark practitioners are available to our clients to explain intellectual property procedures and regulations and guide clients through the process. We provide our clients with solutions to meet that protect their assets, keeping in mind their needs, goals and budget.
We can help you...
- Acquire patents, trademarks and copyrights around the world
- Protect proprietary trade secrets and craft a customized protection strategy
- Expand protection globally through foreign filing
- Avoid potential infringement litigation through clearance searches, international property protection strategies and even “design around” strategies
- Determine if a competitor is infringing on your intellectual property rights
- Understand what potential intellectual property assets they may have and assist in identifying any patentable technology and what trade name assets can be protected
- Develop and train R&D personnel on proper confidential record keeping, invention documentation, patent searching and identifying potential technology that might be protected
- Develop a program and host seminars for key team members.
- Expand protection globally through foreign filing.
- Enter the U.S. market, for clients with a PCT or Madrid Protocol application that want to enter the national stage in the U.S.
- For clients with a product and who are looking for assistance with manufacturing agreements, sales agent agreements and distribution agreements, we draft, review or negotiate contracts to provide the best advantages and advise of potential warning signs of trouble
Some Patents We've Worked On
- Control System Methods for Networked Water Heaters
- Operating Table Patient Positioner and Method
- Mobile Device Utilizing Time of Flight for Localization
Check out the rest of the patents
Who needs to understand patent, trademark, and copyright laws?
Someone who makes new electrical or mechanical devices that perform some kind of function or someone that invents new ideas or methods on how to do things who are also looking to profit commercially must understand patent, trademark, and copyright laws. Many devices created by inventors may be infringing on existing patents due to the complexity of some devices that may be using patented parts contained within them without the inventor realizing this.
A person who starts and runs a new business or organization must be familiar with business law to the extent that it effects their product or service. This may include patent, trademark, and copyright law as well as state and federal liquor laws.
Content Producers (This includes the Internet)
Those who publish digital content frequently online are responsible for adhering to the same copyright and trademark laws as those who publish in print offline. Namely, understanding the DMCA (Digital Millennium Copyright Act) and making sure all content published online is done while following its guidelines.
The distribution of copies of content to the public under the Berne Convention requires that this can only be done with the consent of the copyright holder (initially the author). In the Universal Copyright Convention, "publication" is defined in article VI as "the reproduction in tangible form and the general distribution to the public of copies of a work from which it can be read or otherwise visually perceived." In providing a work to the general public, the publisher takes responsibility for the publication in a way that a mere printer or a shopkeeper does not. For example, publishers may face charges of defamation, if they produce and distribute libelous material to the public, even if the libel was written by another person.
When a business entity is formed around a new product patent, trademark, and copyright laws must be followed. Depending on the complexity of the technology, there may exist several details in the form of patented parts that are part of a device that is, or is a part of, the product.
Typically a newly emerged, fast-growing business that aims to meet a marketplace need by developing or offering an innovative product, process or service. This usually involves a rapidly developing a scalable business model. Many times the speed that start-ups are put together results in start-ups facing legal problems at the copyright, trademark, or patent level simply because business law can be easily overlooked during a fast growing start-ups early stages.
Small Businesses, Mid-sized Businesses, Large Businesses
Business of all sizes and types must be familiar with patent, trademark, and copyright laws for multiple reasons. Not just for the sake of protecting their product or service but making sure their marketing and advertising is compliant as well.
For example, A company logo can be infringing on another company's intellectual property causing legal problems for both parties.
The craft beverage industry particularly involves several business laws that must be adhered to at a state and federal level. When a business creates there own alcoholic beverage both liquor law and trademark law must be understood and followed. The business owner (or owners) can face legal consequences for failing to do so.
New business laws and regulations come into effect regularly so it is important for business owners to be up to date and have a firm understanding of any new changes.
In its simplest form, a patent grants you the right to exclude others from practicing, making, using or importing your invention in exchange of disclosing your invention to the public. The public’s interest is represented by the patent office. In the US, the patent office is called the United States Patent and Trademark Office (USPTO). In Europe, the patent office is called European Patent Office (EPO) which is based in Germany. There are other major patent authorities in the world. The patent office is responsible for issuing patents. Once the patent is issued, the patent holder must enforce the patent.
Applying to register your trademark with the United States Patent and Trademark Office (USPTO) begins a legal process. Legal requirements and deadlines must be met and fees may be required throughout the process. Not all applied-for trademarks register. And if the requirements are not correctly satisfied, it may provide a basis for cancellation of a mark that was registered.
Types Of Patents
A utility patent protects the function of an invention. The subject matter of a utility patent generally includes a useful process or method, a machine or device, a chemical compound or a manufactured item. Currently, the term of a utility patent is 20 years from the date of filing or priority. For patents issued prior to June 8, 1995, the patent term is 17 years from date of issuance. Utility patents are usually more desirable than design patents because of the broader protection generally available to them. (Design patents protect only the ornamental, non-functional elements of the item – the decorative configuration of the parts, surface contours, shapes, colors and textures, for example.)
Provisional Utility Patent Application
A provisional patent is a U.S. national patent application that lasts twelve months (which cannot be extended). Filing a provisional patent application does not give the invention a patent. Only a non-provisional application can receive a patent. Before the twelve months expire on a provisional application, it must be converted to a non-provisional application to continue seeking protection. If this is not done, the patent application is abandoned and does not mature to an issued patent. Provisional patents are often recommended for independent inventors early in the development process. There are several factors that make a provisional patent a good option for some independent inventors: (1) it provides an earlier priority date); (2) it provides an option for delaying some of the application costs; and (3) it allows the applicant to use “patent pending” status in its marketing strategy.
As long as a provisional patent is followed with a non-provisional application within one year, the non-provisional application may claim priority to the earlier filing date of the provisional application. When filing the non-provisional application, the applicant converts the provisional application into a non-provisional application by filing a corresponding non-provisional application that claims specific priority to the provisional application.
Since provisional patents do not require claims or formal drawings, they are less costly to prepare and file. Preparing a less costly provisional application before preparing and filing a non-provisional application allows the independent inventor to spread the patent application costs over the course of the year. Not surprisingly, this comes with a price: by filing the provisional application first, and then following with a non-provisional application, the examination of patent claims, and therefore issuance of an enforceable patent, is delayed by the same period. On the other hand, some inventors discover during the twelve-month provisional period that the invention is not the financial windfall they had envisioned and elect not to proceed with the non-provisional application, thus having risked only a portion of the full non-provisional application cost.
Additionally, over the course of the year that a provisional application is pending, many inventors continue to test and develop their invention. Modifications may be made after meetings with manufacturers or prototype developers. This additional data may be added to the utility application and be useful in preparing the claims, allowing the patent professional to focus claim coverage on the most likely commercial embodiments. It should be noted that any newly disclosed data may or may not be accorded the earlier filing date (depending on whether it was “enabled” in the original application), however, the originally disclosed material should be accorded the earlier filing date. In this case, there may be some claims in the applications with one priority date and other claims with a second priority date.
Once any patent application is filed, inventors are encouraged to market or produce their invention while their patent is pending USPTO approval.
Non-Provisional Utility Patent
Because only non-provisional applications can be granted a patent, the filing of a non-provisional application begins the examination process by the USPTO. The non-provisional application is a complex legal document with very specific requirements. A non-provisional utility application must contain a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. Depending on the complexity of the application, a non-provisional application can be quite costly, but definitely worth the investment if obtaining exclusive rights to the idea would increase marketability of the product to investors and manufacturers and give the patent holder a competitive edge.
Under 35 USC 171, a design patent protects the overall appearance of an invention and is granted for any new, original and ornamental design for an article of manufacture. They may also be available to protect the configuration or shape of an article of manufacture. (Of course, a combination of the two may be protected by design patent as well.) The term of a design patent is 14 years from the date of issuance. A design patent application can only be non-provisional. A design patent may protect a product manufacturer from “copycat” products that may have an inferior quality and detract from its reputation in the marketplace. Therefore, a design patent should only be chosen if the appearance of the invention is important, otherwise utility patent protection should be sought.
The focus of design patents is on protecting the pleasing aesthetic appearance of the article where such design is not dictated by functional considerations. To qualify for design patent protection, the design must be definite and reproducible, novel/original and non-obvious. Design patents often are used to bolster trade dress (trademark) or copyright protection.
Unlike a utility patent, where the applicant has the option to first file a provisional application, a design patent application can only be filed as non-provisional. The same substantive and procedural rules apply to design patents. Full disclosure and definiteness is provided through the drawings. The drawings that accompany the specification typically include at least 7 drawings: each side of a cube and one of the article in use.
Design patent protection may be available for portions of an article of manufacture. For example, design patents have been granted for the shank portion of a drill. In this example, consumers may recognize and desire a unique design in an entire line of tool products. A confusingly similar design might detract from their identification of the desired product and cause them to select an inferior quality copycat design.
When we think of ornamental design, we generally think of things of beauty. However, design patents are available for mechanical devices that “eliminat[e] [the] unsightly repulsiveness that characterizes many machines and mechanical devices which have a tendency to depress rather than excite the esthetic sense.” For example, concrete mixers have received design protection on this basis.
In some circumstances, design protection might be a viable alternative in cases where utility protection is not available because of novelty or obviousness reasons.
Things not eligible for design patent protection include things not intended to be visible in actual use, offensive designs and functional designs. The first factor has been the subject of litigation and the test that evolved was whether in some point of commercial life, design is a matter of concern. (Take for example, lingerie, garment hangers, tent pegs, inner sole for shoes and prosthetic bone implants – all things that are hidden from view during use.) In assessing functionality, it is critical to understand that it is the functionality of the design, not the article of manufacture itself. A key inquiry is whether there are several ways to achieve the function of the article.
Infringement of a design patent occurs when another article of manufacture resembles the patented design so as “to deceive the ordinary observer who gives as much attention as a purchaser usually gives.”
A plant patent provides exclusive rights for the invention or discovery of an asexually reproduced variety of plant. This does not include a tuber-propagated or an uncultivated plant. A plant patent lasts for 20 years from the filing date and excludes others from reproducing, selling or using the plant. As with utility patents, plant patent applications are either provisional or non-provisional.
International Patent Protection
Most countries have patent laws, and many of these laws differ between countries. If you would like to acquire patent protection in several countries, you have two routes to consider for starting the process:
(1) File a separate patent application in each desired country simultaneously (some regional patents are available). By filing a patent application in one of the Member States of the Paris Convention for the Protection of Industrial Property. This establishes the filing date to use for any other application filed in a Paris Convention country within the next 12 months.
(2) File a PCT application to use in PCT Member States. The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO) and includes more than 125 Member States. The PCT application allows the applicant to file one “international” application filed simultaneously in the desired PCT countries. This method eliminates the need to file several separate national or regional applications. The PCT applications may then enter the “national stage” in each individual country where you seek patent protection.
When To Patent
The United States gives inventors
Most other countries are absolute novelty jurisdictions, meaning that no patent can be obtained if it is disclosed before patenting. In other words, there is no one year grace period. To preserve your rights, it is best to patent before any of these activities occur.
The law requires an inventor and attorney to disclose these things to the Examiner via an Information Disclosure Statement. Failure to do so is fraud on the patent office and the patent is void and unenforceable. On a practical note, when money is involved, an inspired competitor or alleged infringer will go to great lengths to uncover these things. Disgruntled employees, ex-spouses and business associates are happy to assist them with testimony.
Components Of A Patent Application
The Manual of Patent Examination Procedure (MPEP) requires an application for Letters Patent to contain:
- Title of the Invention
- Cross-reference to Related Applications, if any
- Reference to Microfiche Appendix, if any
- Brief Summary of the Invention
- Brief Description of the Drawings
- Detailed Description of Preferred Embodiment
- Abstract of the Disclosure
- Signed Oath or Declaration
Customarily, most patent applications also contain a “Background of Invention” section with subdivisions for field of the invention and objects of the invention.
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (35 USC Section 112.)
Thus, the statutory requirements of the specification are:
- An adequate description (level of description varies by technology and desired breadth of claim scope)
- Enablement (enough information for a skilled person in the art to make it/use it without undue experimentation)
- Best Mode (also referred to as the preferred embodiment): The best known way for the inventor to practice the invention must be disclosed within the specification, but the inventor need not point out which embodiment (version) is the best mode.
The patent professional will work with the inventor to develop the specification and drawings, determine the most critical features to describe and depict, broaden the scope of the invention where possible to enhance the strength of the patent, and develop aggressive claims that are not likely to be rejected but will provide the maximum patent protection possible.
Drawings will be required for most inventions. Patent drawings should illustrate the novel concepts and significant features of the invention. In process claims or software patents, these drawings may consist of standard industry flowcharts describing the steps. Formal drawings meeting patent guidelines will be required for utility and design patent applications to issue. Informal drawings may be used for provisional applications and in some cases, in the early stages of utility applications. Notably, with new patent procedures, it is increasingly our experience that informal drawings will not be accepted even for provisional patent applications.
Oath or Declaration
A utility or design patent application requires an oath or declaration from each inventor.
Fees depend, in part, upon the size of the entity with an ownership interest in the application. The USPTO recognizes two classes of patent applicants: small entity and "other than small entity." In order to encourage inventions and the progress of science, the USPTO generally charges only one-half of its fee to small entities. While this is an overstated generalization of the fee structure, it is a good rule of thumb for most filings.
Small entities include individual inventors, not-for-profit organizations and companies with less than 500 employees. (There are other restrictions, but these are the most defining elements.) Currently, a basic utility patent containing less than a total of 100 pages, 20 claims, 3 independent claims and no multiple dependent claims for a small entity pays a basic filing fee of $730. Additional fees will be incurred for lengthy applications, additional claims and other conditions. The current fee schedule is available on the USPTO official website (www.USPTO.gov). A basic provisional patent will incur a filing fee of $130 and a design patent will incur a basic filing fee of $380.
The process of “arguing” the merits of your application is referred to as “prosecuting” the patent application. This process typically takes from one to three years and is often similar to a negotiation with the patent office. A balance is reached between the limited scope of patent protection offered by the Examiner and the broader scope of patent protection sought by the inventor. This discussion is not intended to cover the full scope of patent prosecution practice, but to familiarize a non-patent professional with a typical prosecution scenario. It should be understood that additional and other actions may be taken by the USPTO.
After filing a patent application, an Office Action from the USPTO will usually be received within 18 to 36 months. (Some art units are so overwhelmed with applications that it may even take 40-44 months or even longer in the electrical and business method arts.) Typically, the first review of the application by the USPTO Examiner is sent to the applicant in the First Office Action. This may be final or non-final, but it is usually non-final.
In some cases, the First Office Action on the merits is preceded by a Restriction Requirement from the Examiner. The Examiner may break the claims into distinct inventions and ask the inventor to elect one such invention for prosecution. The remaining claims may be immediately prosecuted by the inventor via a continuation application, or held in abeyance until the first application is allowed and prosecuted via a divisional application. Of course, the inventor may elect not to prosecute on the non-elected claims.
Typically, in the First Office Action, the Examiner will reject some or all of the claims of the patent under 35 USC 103 when the Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner or disclosed by the applicant. Other typical grounds for rejecting an application include 35 USC 102 rejections for lack of novelty. Yet other grounds for rejection may include 35 USC 112 indefiniteness, 35 USC 101 subject matter or double-patenting.
It is then necessary for the patent professional to argue that the invention is patentable based upon specified differences between the invention and the prior art cited by the Examiner. Prior art may generally include other domestic and foreign patents (both published and unpublished), articles, thesis, conference papers, and other literature. Legal arguments and case law may be used to refute the Examiner's position. A telephone or in-person interview with the Examiner may also be arranged to find agreement on any issues of dispute.
Typically, the Examiner responds to the inventor’s Reply to First Office Action with a Second Office Action. While this may be final or non-final, it is usually final. The Examiner may reject all of claims a second time, indicating that the inventor’s arguments were not persuasive. The Examiner may set forth conditions (in the nature of required changes) upon which a patent would be allowed for some of the claimed subject matter. The inventor may make the “suggested” changes and request the patent to be issued in accordance with the Second Office Action. Alternatively, the inventor may request continued examination (“RCE”) and another opportunity to address the Examiner’s rejections. This additional chance to argue for patentability requires a fee (typically $430 for small entities). The inventor may also make improvements or revisions in his invention, addressing the issues raised by the Examiner, and file a continuation-in-part application requesting priority to the parent application. The new subject matter will not be granted priority if not enabled in the parent case and the application may have some claims with one prior art date and other claims with a second prior art date.
Once put in condition for allowance, the USPTO will issue a Notice of Allowance. Upon payment of an issue fee (you have 3 months to pay) and attention to any formalities raised by the patent office, a patent will normally be published and issued within 3 months. These formalities typically include replacement of pending patent application or published patent application references with the issued patent numbers for any such patents that issued during the pendency of prosecution. They may also include minor drawing revisions such as renumbering or changes to the title of the invention.
How To Protect An Idea
Nondisclosure agreements create a state law contractual obligation, and thus, contractual damages for breach. These fact-specific enforcement actions are often expensive and lengthy endeavors. The strength of a nondisclosure agreement is proportional to the specificity of the confidential information covered by the agreement. Whereas nondisclosure agreements are written fairly broadly, used alone, they may not offer the best protection to an inventor’s proprietary technology. In many cases, it is preferable to base a nondisclosure agreement on a filed patent application, including a provisional application. This creates a firm scope of the technology being disclosed, as well as potential federal causes of action for infringement on a patent that issues from such patent application or the utility application claiming priority to a provisional application.
Nondisclosure agreements are often used when a new concept is brought to a third party for manufacturability/marketability analysis or assistance in reducing it to practice. These meetings often become collaborative “think tank” sessions and it may become difficult to sort out which technology was brought in and which technology evolved as a consequence of the collaboration. Inventorship issues arise as well as disputes over ownership of the technology. A simple nondisclosure with broadly listed subject matter may not effectively assist in resolving these fact-specific conflicts. On the other hand, a filed provisional patent application would be extremely helpful in establishing the bounds of the concept or invention prior to any collaboration or improvement.
It is important to remember that even “patent pending” indicates that an application has been made seeking a patent; it is not a guaranty of a patent being issued by the Patent Office. Additionally, provisional patent applications have no enforceable claims and may provide virtually no real protection if they are not converted to utility applications within one year. Thus, if a patent never issues as a result of an unpublished application (provisional applications, design applications, and utility applications with nonpublication requests and applications abandoned prior to publication), it may still be a trade secret.
Once the “cat is out of the bag” without an NDA, it may be difficult to maintain it was a trade secret. We generally recommend a conservative practice that includes the use of both provisional patents AND confidentiality agreements.
Purpose Of A Trademark
Trademarks protect the public from confusion and protect the trademark owner from losing his market. Trademarks serve several functions in the modern marketplace:
- Indicate origin of your product or service allowing customers to easily identify your brand from others in the marketplace;
- Indicate to your customers an assurance of quality;
- As a marketing and advertising device to develop and protect your market.
Mark Format: Standard Character Or Stylized/Design
Before filing your trademark application, you must decide what format you would like the mark to take. There are two choices of format: (1) standard character and (s) stylized or design.
This format is used when how the mark looks is not important. Standard character format registers only the word(s), letter(s) or number(s) (or any combination of these). The rights granted for a standard character mark are quite broad in that they provide exclusive rights to any manner of presentation.
Stylized or design
This format should be selected when there is a certain design element and/or word(s) and/or letter(s) that have a particular appearance (font style, size or color) for which you are seeking protection. Marks registered in color must be used in color to fall within the scope of protection.
A business may have several marks or the same name. They may register a standard character mark, a stylized mark and a mark with a logo. They may register a mark with different colors or writing styles. In addition, it is not uncommon to have both a trademark and a service mark in the same name. A restaurant is a service but it may also sell take-home products (sauces, ice cream, etc.). Franchise entities often have trademarks for products and service marks for the franchising consultation services.
Filing Basis: 'In Use' Or 'Intent To Use'
A trademark application must include a basis for filing, either that the mark is currently being used in commerce or the applicant intends to use the mark in the future. Before your trademark will register, you must be able to demonstrate that the mark is being used in commerce. An ‘in use’ application, therefore, will generally register more quickly than an ‘intent to use’ application because in order to file as the former, the mark must already be used in commerce.
If you plan to file an ‘intent to use’ basis, it is important that you have a bona fide intent to use the mark, but perhaps need a bit more time before you are market ready. An “intent to use” application must include a sworn statement that you have the good faith intent to use the mark in commerce. When it is time to file a specimen, if you have not used the mark in commerce, you can request an Extension of Time of six months (up to five times total). You must file a specimen before the mark will register. Keep in mind that each extension adds expense to the overall costs for registration.
Components Of The Trademark Application
In order to file a trademark application with the USPTO, you must include:
- Applicant (owner of the mark)
- Contact information for correspondence (usually the attorney)
- The Drawing (depiction of the mark)
- Good/Services to which the mark applies
- Filing basis (usually actual use in commerce, bona fide intent to use in commerce, or based on a foreign or international application)
- Specimen (for use-based applications; an actual example of how you are using the mark in connection with the identified goods and/or services, usually a digital image of the mark such as a product label, product insert, advertisement, business card, or pamphlet describing the goods or services)
- Signature (usually an electronic signature of the Trademark Attorney)
- Filing fee
Trademark Clearance Search
A trademark clearance search searches the federal register, state registers and common law sources (for unregistered marks) to determine if the field is clear to use a proposed mark and to identify potential issues before the process is started. This service is recommended before investing in your brand, logo, etc., as the costs of these investments is high.
Choosing A Strong Name
It is appealing to choose marks that are related to the product, that describe or suggest something about it. But these are harder to register and more difficult and expensive to protect in the long run. Your best options for a mark are those that are unique and unrelated to the product. Shoot for arbitrary or fanciful marks.
Remember, some marks are not protectable at all: those classified as generic terms or common names for a product. Keep in mind, however, that a term may be generic for one product but arbitrary for another! For example, "spoon" is generic for eating utensils but arbitrary to cigarettes.
Another thing to consider: a trademark can lose its trademark status if it is not protected. You MUST choose a product name different than your intended brand name. That sounds easy, but inventors who make new products forget this rule so often it is cliché. We all know the story about Kleenex® brand tissue and Xerox® brand photocopies. Moral of the story: ALWAYS refer to "Your brand of product X." This reduces the chance of your trademark losing its registered status and becoming generic.
Maintaining A Registered Mark On The Federal Register
In order to keep a mark in force on the register, periodic filings are required. These include affidavits of continued use or excusable nonuse and applications for renewal. Generally, these are required at the 5 year mark, the 10 year mark, and every 10 years thereafter. The fees generally range around $300-$600 per class of good or services.
Other optional filings such as an affidavit of incontestability under Section 15 (§15 declaration) may also be filed. Fees are similar to those described above. In theory, a mark may continue as long as it is used in commerce in connection with goods and services identified in the application. It may continue for more than a century, well beyond protections offered by patent and copyright law in most cases.
To maintain your trademark registration, you must file a Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration) before the end of the 6th year after the registration date. Failure to file this declaration will result in the cancellation of the registration.
A combined §§8 and 9 must be filed before the end of every 10-year period after the registration date. Failure to make these required filings will result in cancellation and/or expiration of the registration.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a written document (Office Action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If the refusal is based on a pending application, the examining attorney will notify the applicant of the other mark, but a refusal will ultimately be issued if the earlier-filed application is ultimately registered.
In addition to likelihood of confusion, other reasons marks are refused for registration include marks that are primarily merely descriptive or deceptively misdescriptive of the good or services, primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods or services, primarily a surname or ornamental. This is not a complete list of reasons, but the ones most often encountered by applicants.
The applicant’s response to the Office Action must be received in the Trademark Office within six (6) months of the mailing date of the Office Action or the entire application will be declared abandoned. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal of the Trademark Office.
Publication For Opposition
Once the examining attorney issues a Notice of Allowance or raises no objections to registration, the application is approved by the examining attorney for publication in the Official Gazette, a weekly publication of the United States Patent and Trademark Office. The publication is available online for review each week.
The Trademark Office will send a Notice of Publication to the applicant’s attorney (if one is used) stating the date of publication. When it publishes, a party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file an opposition or a request for an extension of time to oppose. An opposition is similar to a proceeding in federal court, but it is held in the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A certificate of registration will issue for applications based on actual use or a Notice of Allowance will issue for intent to use applications. This generally happens within about 12 weeks of publication.
The Trademark Law classifies perceptory features as descriptive in nature. Therefore, distinctiveness must be shown before protection can be granted to these nontraditional marks.
If the color is used for source identification rather than a functional aspect, and the choice of color does not affect cost or quality, the color may be protected as a mark if secondary meaning (consumer association and recognition) is established. In other words, the color must be recognized by the consumer as signifying a “brand” or source of the product rather than merely a color selection. For example, in sandpaper, colors are used for color-coding various abrasiveness and therefore are functional in nature and not protectable. A popular example of a registered color marks is the brown of UPS.
Sound clips that are source-identifying may be protected as marks. Examples are movie and TV studio sound clips (such as the lion roar of MGM or the chimes for NBC).
The key inquiry for scent is whether it is unrelated to utilitarian aspects or function of the product. For example, scents are utilitarian for air fresheners and perfumes, but not for sewing thread.
Flavors must be unrelated to product function to be granted trademark protection. They must also be used by a consumer to distinguish products from one another. With respect to pills, flavors are functional in that they make medicaments palatable. Additionally, since consumers don’t taste pills until after purchase, they don’t function for consumer recognition purposes. Therefore, flavors were unprotectable for medicament applications.
Motions are especially desirable for internet and website applications and film companies where a series of motions by digital imagery are source-identifying in nature, and therefore, protectable under Trademark Law. The animated “Netscape” logo and the moving image that appears before Columbia and 20th Century Fox Films Corporation features are examples of trademarkable motions.
Copyright is a form of intellectual property law that protects original works of authorship including literary, dramatic, musical, and artistic works. Artistic works include poetry, novels, movies, songs, and computer software. Architecture is visual art that enjoys copyright protection. Copyright does not protect facts, discoveries, ideas, systems, or methods of operation, although it may protect the way these things are expressed. Chapter 13 of the Copyright Law protects original designs of vessel hulls.
Copyright is vested in a work of original effort as soon as some aspect of the work is fixed in a tangible medium.
Reasons A Work Might Not Be Protected By Copyright
- It is not original
- It is not fixed in a tangible medium
- The copyright term has expired
- It was dedicated to the public domain by the owner
When You Need To Register
Your work is under copyright protection the moment it is created and fixed in a tangible form (perceptible either directly or with the aid of a machine or device). In general, registration is voluntary. (For boat hull design protection under Chapter 13, registration within 2 years is required.) You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work. The practice of sending a copy of your own work to yourself is sometimes called a “poor man’s copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration.
Copyright Ownership By Business
When employees or outside consultants draft text or graphic design more marketing, websites and product, packaging, the employer should consider seeking rights to the material. Businesses may apply for and own copyrights. The business will need to be the owner of the copyrighted material. This is commonly by an assignment or through a work-for-hire arrangement with the author.
Formal Registration Process
The time the Copyright Office requires to process an application varies, depending on the amount of material the Office is receiving at the time the application is submitted. If your submission is in order, you may generally expect to receive a certificate of registration within approximately 4 months of submission. Your registration becomes effective on the day that the Copyright Office receives your application, payment, and copy (ies) in acceptable form.
Average Copyright Registration Costs And Filing Fees
* The following costs are provided for reference only and are subject to change.
Legal Fees for copyright registration of product brochure, packaging artwork, a literary work, drawings or photographs (not applicable to software registration) - $295
Disbursements include filing of the copyright application (approx. $45) and postage for express mail delivery (approx. $15).
In some cases, we it is possible to include more than one related digital or graphic image, photograph, drawing, artwork, and article in a single filing as a collection.
Legal services for copyright registration include:
- Up to 1 hour consultation (1 meeting or teleconference)
- Execution of all paperwork
- Preparation of Formal Filing Papers for United States Copyright Office
- Review of Registration Certificate for deficiencies
- Ancillary Documents and Services
Copyrights After Registration
Copyright rights accrue under common law, even without notice of your intent to claim copyright. This means that even before registering, you have some weak copyright interests. However, to be able to sue for infringement in federal court, you must register the copyright with the Copyright Office (a part of the Library of Congress). Additionally, one defense that an infringer may use is that he was an innocent infringer, that is, he had no notice that a copyright was claimed in the subject matter. Damages are much different than in the case of willful (knowing) infringement. Thus, it is advisable to mark your work, plans or drawings with a copyright notice to protect your interests.
Copyright law provides the following notice format for general copyright:
© or Copr. or Copyright + Year of First Publication + Name of copyright owner
Some people also use more extensive warnings in a legend (in addition to the notice above).
I Think Someone Stole My Copyrighted Idea
While you may feel violated, ideas and facts are not protected by copyright. It is the expression of ideas that is granted copyright protection. For example, a similar character or plot found in another literary work will not likely be infringing. It is the words used to tell the tale, that is, it is the expression that is protected by copyright. Similarly, an algorithm or function of a software program is not protected by copyright; however, the code written to accomplish the function may be protected.
The Test For Copyright Infringement
The test to determine whether you are infringing on someone’s copyrighted work or someone is infringing on your copyrighted material is “substantial similarity”: whether an ordinary observer would recognize the later work as copied in whole or in part from the earlier work.
“Fair Use”: Permissible Reproduction Of A Copyrighted Work
Section 107 of US Copyright law contains a list of the various purposes for which the reproduction of a copyrighted work may be considered “fair.” These "fair uses" include criticism, comment, news reporting, teaching, scholarship, and research. The U.S. Copyright Office's official website explains:
Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:
- the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
The difference between “fair use” and infringement is unclear and not easily defined. US copyright law does not specify the number of words, lines, or notes that may be taken without permission and not considered infringement. Also, acknowledging the source of the copyrighted material is not a sufficient substitute for obtaining permission. It is always recommended to get permission from the copyright owner before using copyrighted material. If obtaining permission is not possible, the copyrighted material should not be used, unless the material qualifies under the “fair use” doctrine. It is best to consult an attorney to determine if the material would be considered “fair use”.