Our legal system provides certain rights and protections for owners of
property. The kind of property that results from the fruits of mental labor
is called Intellectual Property. Rights and protections for owners of
Intellectual Property are based on Federal Patent laws, Trademark laws,
Copyright laws and state Trade Secret laws. In general, Patents protect
inventions of tangible things; Copyrights protect various forms of written
and artistic expression; and Trademarks protect a name or symbol that
identifies the source of goods or services. The focus of this treatise, is
on Patents, Trademarks and Copyrights.
If you have any questions regarding Patents, Trademarks and Copyrights, contact Howard Cohn at howard@cohnpatents.com or at 1-800-613-0955.
PATENTS
WHAT IS A PATENT?
A U.S. patent is a document, issued by the Federal Government, that grants to the owner of a new invention a legally enforceable right to exclude others from using the invention described and claimed in the document. Congress allows this right, for a term ending twenty years from the date of filing of an application for patent, to encourage their public disclosure of their idea and as an incentive for investing in its commercialization. When a patent expires, or is held invalid, the right to exclude the others ceases.
UNDER WHAT CONDITIONS IS A PATENT GRANTED?
Congress has specified that US patents will be granted if the inventor files a timely patent application which describes a new, useful and unobvious invention of proper subject matter. To be timely, an application must be filed within one year of publicizing the new invention. Note that this one-year grace period is not available in most foreign countries. Therefore, a U.S. inventor who wants to obtain corresponding foreign patents must first file a US Patent before any divulging their new invention to the public. The description of the new invention in the US Patent application must be complete enough to enable others to use the new invention. Moreover, the US Patent application must describe the best manner known to the inventor of carrying out the new invention. The described invention must be new i.e., not used or invented by someone else.
The proper subject matter of a US patent is any product, process, apparatus or composition of matter. Special provisions in the US patent law also permit Design Patents directed to ornamental designs for products.
WHY OBTAIN A PATENT?
Inventors usually patent their new idea to obtain commercial advantages that go along with the right to exclude others from using their invention. Given the high cost of research and development, the opportunity to recoup these costs through commercial exploitation of their invention may be the primary reason justification for undertaking research in the first place. Sometimes inventors go to a Patent Idea Service to help them. This should only be done with extreme caution. It is preferable for inventors to take their patent idea to a Patent invention attorney or a Patent Invention lawyer to guide them in the steps for obtaining a patent.
US Patent rights can be commercially exploited in two basic ways: (1) directly, by the inventor's using the new invention to obtain an exclusive marketplace advantage (as where the US patented technology results in a better product or produces an old product less expensively) and/or (2) indirectly, by receiving income from the sale or licensing of the patent.
It is important to note that a US patent does not give the inventor the right to practice the new invention. The inventor can practice his invention only if by so doing he does not also practice the invention of an earlier unexpired patent. While only one patent can be granted on a particular invention, it is easy to see how more than one patent could be infringed by making a single product. For example, consider that A has a patent on a new type of door and B invents an improved door of this type with a special lock. B could not sell the improved locking door since A's patent broadly covers all doors of this type. On the other hand, A could not incorporate the improved lock in his basic door since B's patent covers this combination. In these circumstances both A and B can be free to practice the best technology (locking door) only if each grants a patent license to the other.
The indirect exploitation of a patent may be exclusive, e.g., by selling all rights in the patent or granting an exclusive license. Licenses can be non-exclusive, allowing many parties, including the inventor, to practice the invention simultaneously. A patent may also provide commercial advantages in addition to the potential for an exclusive market position or licensing income. A patent often lends business credibility to start up ventures and can open doors to both technical assistance and financing necessary to bring a new product to market. An improvement patent may also provide the barter necessary to cross license any basic patents held by others which block the path to market.
HOW TO OBTAIN A PATENT
Patents are obtained through a complex administrative proceeding in the United States Patent and Trademark Office. Since the legal rules that govern this proceeding are quite extensive and often complicated, it is strongly recommended that an inventor seek the assistance of an experienced patent attorney before beginning this process.
Before actually applying to the Patent and Trademark Office there are several important preliminary steps that should be followed to prevent possible loss or damage to future patent rights. One of the most important of these preliminary steps is proper record keeping. Since United States patents are granted to the first inventor, it may become necessary to prove when the invention was made. This is best accomplished by making a complete record of the invention from the first idea right up through development of commercial products. The invention record should clearly describe the invention with words and pictures (photographs, sketches, drawings, etc.) and should explain fully how it operates or is used. Each page of invention record should be signed and dated in ink by the inventor. The record should also be reviewed as it is made by at least one other trustworthy person who is capable of understanding the invention, who should sign and date the record under the notation read and understood by. . . .
Another important preliminary step is the determination of whether the invention is likely to be considered patentable by the Patent and Trademark Office, and if so, whether a patent which might be granted would be broad enough in its coverage to be worthwhile in a commercial sense. Such a preliminary evaluation of patentability should be made by a patent attorney, based in part on the prior patents and other materials located in a search of relevant records in the Patent and Trademark Office. While the attorney's opinion that the invention should be patentable is not a guarantee that the patent will be granted, if he finds that the invention probably is not patentable or economically worthwhile, the considerable cost and effort of going forward with the process can be avoided.
The next step in the process of obtaining a patent is the preparation of a patent application. A patent application is a legal document, which must fully describe the invention with words and, where appropriate, drawings, and which includes claims which define the legal boundaries of the invention. It is essential to the validity of the patent, and its ability to adequately protect the invention, that the invention be described and claimed completely and precisely. Accordingly, the inventor should tell the patent attorney everything about the invention, including what problems it solves and what difficulties were overcome to make it work. Particularly important is the duty to tell the attorney about prior patents or other prior inventions of which the inventor is aware, so this information can be disclosed to the Patent and Trademark Office. The US patent application will also contain a Declaration and Power of Attorney form which the inventor must sign indicating that he has read and understood the application and affirming that he is the first inventor. The US Patent application and a filing fee are then filed with the US Patent and Trademark Office.
BASICS OF THE PATENT APPLICATION
The US patent application is a written description of your new invention, somewat like a technical manual, and certain formalities must be observed.
First of all, the US Patent application must contain "a written description of the new 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 [the] new invention."
A certain format is expected of the US Patent application, and it must contain one or more claims particularly pointing out and distinctly claiming the subject matter which the invenor regards as his/her invention or discovery. (37 CFR §1.75(a))
The "gist" of the new invention will often be repeated in the summary, detailed description, claims and abstract, in various ways. There are various parts to a US patent application, as follows.
The Title should be short and general.
The Technical Field is a very short statement in the patent application which is intended to aid the Patent Office in properly classifying the application for examination. This is not the “new invention".
The Background Art is where the stage is set for your new invention. What is out there? What are some of the shortcomings? What problems are going to be solved by your invention. This is not the "invention".
The Summary is relatively meaningless. It normally contains a repetition of the main claims. It may contain some general statements about the invention and its advantages.
The Brief Description of the Drawings is simply short statements saying what the views are, and whether the drawing is illustrative of the prior art or of the invention.
The Detailed Description of the Invention is where the new invention is explained in detail, referencing the drawings, etc. "Detailed" means just that - detailed - often boring, including alternatives, including "best mode", including ..... everything. Prior art may also be discussed here, as appropriate - for example, to introduce another step in the invention.
The Claims define the metes and bounds of the invention. Everything in the claims needs to be supported by the preceding description(s) of the invention. This is what is supposed to tell the world what your invention is, so that they can decide whether they want to infringe it. This is the measuring stick. This is what gets infringed - claims. The claims are VERY important. That is why they are best drafted by a patent idea lawyer or patent invention lawyer or attorney.
The Abstract is a relatively meaningless paragraph which is supposed to summarize the disclosure. This is typically a classification (searchability) thing. This is not the new invention.
BASICS OF CLAIMS
Claims are written in one of two forms, either "independent" or "dependent".
An independent claim is a self-contained description of the invention. It has three parts:
(1) a "preamble";
(2) a "transitional clause"; and
(3) a "body", which includes the elements of the claim.
For example, consider the following independent claim:
Claim 1. (preamble) A mousetrap .................. (transitional clause) comprising:
a flat board (element 1);
a bomb (element 2) mounted to the board; and
means (element 3) for detonating the bomb in response to proximity of a mouse to the bomb."
A dependent claim includes, by reference, everything set forth in a previous independent or dependent claim, and adds to or modifies the description of the previous claim(s). For example:
Claim 2. (adding to the description) "A mousetrap according to claim 1, further comprising:
means (element 4) for attracting a mouse into proximity with the bomb."
-or-
Claim 3. (modifying the description) A mousetrap according to claim 2, wherein:
the means for attracting the mouse is a piece of cheese mounted to the board."
The above are examples of apparatus claims which describe a device or an article of manufacture.
Claims can also be directed to processes, or methods. For example:
Claim 4. "A method of destroying mice, comprising:
attracting a mouse into proximity with a bomb;
detecting the proximity of the mouse with the bomb; and
blowing the mouse to kingdom come when it is in proximity with the bomb."
Claim 4 is an independent method claim. There can, of course, also be dependent method claims.
That's it for the basics ...
The filing of an application for a US patent does not create any enforceable rights since the courts will only stop an infringer after the patent is granted. Nevertheless, marking a device Patent Pending or Patent Applied For may discourage potential infringers since it puts them on notice that they may have to stop production once the patent is granted. It is unlawful to use such a notice unless an application for patent is actually pending in the U.S. Patent and Trademark Office. After the patent has issued, it is also good practice to mark the products sold under the patent with the patent number because it gives the inventor certain additional legal rights.
In the Patent and Trademark Office the application undergoes a process called Examination. After an initial processing stage (which may take 18 months or more) a Patent Examiner will review the application and write a letter (called an Office Action) commenting on it. The First Office Action often is a refusal to grant the patent, and the applicant then has an opportunity to modify the application to overcome the Examiner's objections. With the inventor's help, the patent invention lawyer or attorney will reply in writing to the Office Action, usually making some changes and arguing that others are not necessary. Typically, at least two such exchanges between Patent Examiner and patent idea lawyer or attorney are necessary to resolve all the legal and technical issues. In general, it now takes an average of about 18-26 months from filing to complete the examination process. During this period the application is kept secret, i.e., only Government personnel and persons authorized by the inventor are permitted to examine the file.
When the Patent Examiner is satisfied that the application is in proper form and its claims are allowable, the applicant is notified that a patent will be granted upon payment of final government fees. In order to keep the patent in force until it expires it also is necessary to pay progressively higher maintenance fees at 3 1/2, 7 1/2 and 11 1/2 years after the original grant.
While the patent grant makes the information in the application available to the public, the inventor has the right to prevent others from making, using or selling what is claimed for as long as the patent remains in force.
I try to keep my client closely informed of all issues and activity pertaining to their Patent application. I do so by sending copies of all correspondence received from the U.S. Patent and Trademark Office and the Patent Examining Attorney. I also forward copies of all correspondence sent to the U.S. Patent and Trademark Office on your behalf.
If you have any questions regarding the preparation or filing of a US Patent Application, contact Howard Cohn at howard@cohnpatents.com or at 1-800-613-0955.
PROVISIONAL PATENT APPLICATION
Congress has recently authorized a new form of preliminary patent application known as a Provisional Patent Application. Inventors turn to the Provisional Patent Application as an inexpensive way to protect their new inventions. Often this is necessary because an upcoming product release or trade show does not allow enough time to prepare and file a Utility Patent Application before disclosing their invention publicly. The Provisional Patent Application protects their invention for one year providing time to prepare and file a more detailed Utility Patent Application.
The Provisional Patent Application is not as detailed nor as costly as a Utility Patent Application. But then, its goals and benefits, as set forth below, are somewhat different.
1. The Provisional Patent Application provides the inventor with the all-important priority date.
2. It offers an extra year of protection (which means instead of 20 years of protection if the patent is granted, it has 21 years).
3. It gives a 12-month period to more fully develop the invention.
4. It doesn't require a specific format; in some cases, a drawing and specification, a paper, or just a handwritten description with a photograph is all that is filed.
5. The government filing fee is relatively inexpensive to file ($100 for small entities; $200 for large entities).
6. The Provisional Patent Application is never examined by the U.S. Patent Office, as with a Utility Patent Application. It is only reviewed for procedural matters.
7. After a Provisional Patent Application is filed, the invention may be disclosed or sold without fear of losing patent rights.
8. The Provisional Patent Application cannot be converted into a design patent.
9. Once a Provisional Patent Application is filed, the invention can be designated as Patent Pending.
The priority date is important because it establishes the date when the subject matter of the disclosed invention was first filed in a Provision Patent Application. To rely on the priority date, within one year of filing the Provisional Patent Application, the inventor must convert the Provisional Patent Application into a Utility Patent Application, incorporating the information contained in the Provisional Patent Application.
Filing of the Provisional Patent Application provides a one-year cushion. During the year, as the product or concept is further developed, additional Provisional Patent Applications may be filed. Failure to convert the Provisional Patent Application to a Utility Patent Application within one year of the filing date, results in the loss of the priority date.
Since the Provisional Patent Application will not be substantively examined, claims defining the scope of the invention are unnecessary. However, to rely on the priority date of the Provisional Patent Application, the disclosed invention has to support the broadest invention that is ultimately claimed in the Official filed Patent grant incorporating the Provisional Patent Application.
A description of the invention and supportive drawings are typically the essence of the Provisional Patent Application. A Provisional Patent Application can even protect a theoretical working model that is not yet reduced to practice. Just as the filing fees are substantially reduced, so are the legal fees for writing the Provisional Patent Application because far less work is involved.
Development of the invention should be continued after the Provisional Patent Application is filed with the goal of filing for a Utility Patent Application within one year of the priority date. As the development continues, it is often wise to file additional, more current Provisional Patent Applications. The Provisional Patent Application is not a substitute for a Utility Patent Application, which should be filed as soon as possible. I recommend that once the idea to be patented is developed, the Provisional Patent Application be drafted with all the details available and then filed as soon as possible. As mentioned before, it is best to use a Patent Invention lawyer to handle this task.
Special Considerations
It is possible for an inventor to sell a product without first filing for a patent, and then filing a Provisional Patent Application up to a year later, and finally filing a Utility Patent Application one year after the filing date of the Provisional Patent Application. The effect of this procedure is to gain a two-year grace period. The downside of waiting the extra year before filing the Provisional Patent Application is the loss of one’s legal right to file patent applications covering the invention in foreign countries.
The most important and least understood aspect of the Provisional Patent Application is that it must disclose all of the elements set forth in the claims of the Official Patent Grant resulting from the later filed Utility Patent Application. That is, the description of the invention in the Provisional Patent Application must include enough detail for others to make or use the claimed invention in the Patent Grant. Moreover, if the Patent Grant is challenged, and the written description in the Provisional Patent Application is found inadequate, all could be lost.
A few years ago, the U.S. Court of Appeals for the Federal Circuit, handed down a decision in New Railhead MFG, LLC v. Vermeer Mfg. Co. invalidating New Railhead's Patent. The Railhead's Patent covered a drill bit for horizontal drilling in rock. Railhead sued a number of patent infringers using similar drill bits. Ultimately Railhead lost because its utility patent was invalidated on the grounds that the claimed drill bit defined a structural feature that had not been fully described in the Provisional Patent Application. In other words, the content of the Provisional Patent Application did not support the relevant claims and was not available for its all-important priority date. This caused New Railhead's Patent Grant to be rendered invalid because it was filed more than a year after the drill bit (initially disclosed in the Provisional Patent Application) was sold.
The decision means that although the Provisional Patent Application does not require claims, it must clearly and exactly describe the invention and the manner and process of using it, in order to support the claims based on the Provisional in the later filed Utility Patent Application. But without incorporating claims, how can a Provisional Patent Application be drafted to support them?
The solution is straightforward. One must put great effort into preparation of the Provisional Patent Application, no matter how rushed for time, consider the broadest scope of the invention and ensure that it is covered by the Provisional Patent Application. As mentioned before, it is best to use a Patent Invention lawyer to handle this task.
I try to keep my client closely informed of all issues and activity pertaining to their Provisional Patent application. I do so by sending copies of all correspondence received from the U.S. Patent and Trademark Office and the Patent Examining Attorney. I also forward copies of all correspondence sent to the U.S. Patent and Trademark Office on your behalf.
If you have any questions regarding a Provisional Patent Application, contact Howard Cohn at howard@cohnpatents.com or at 1-800-613-0955.
TRADEMARK BASICS
Trademark Considerations and Procedures
The following is a summary of procedures for considering, selecting and adopting a new trademark and procedure for obtaining and maintaining a Federal trademark registration. Although I refer to “trademark” below, my comments include service marks, which are trademarks that are associated with services. The following is a brief synopsis of procedures. There are further issues that may arise during the steps described below, if you have any questions, please contact me at howard@cohnpatents.com or at 1-800-613-0955.
Considering a trademark
You have developed a new product and you want to select a trademark under which you would sell the product. A trademark is a brand or name which identifies the source or origin of goods or services and usually is associated with good will which already exists or is expected to be developed when the trademark is used with the product or service. REMEMBER, a trademark is a BRAND–it is not your company name; your company name is a trade name.
A trademark is a PROPER ADJECTIVE. Keep in mind the parts of speech; a trademark is an adjective– it is not a noun. An adjective is a modifier. Consider BAND-AID bandages and CURAD bandages; the word bandages is the noun and the other word is the modifier that indicates source of origin of the bandages. Since a trademark is an adjective, it is not a “thing,” and, therefore, a trademark cannot own or possess something else; DO NOT USE A TRADEMARK IN A POSSESSIVE FORM. DO NOT USE A TRADEMARK AS A NOUN. Wrongful use of a trademark can dilute the trademark and can lead to complete loss of trademark rights, as was the case for former trademarks ASPIRIN, ZIPPER, and others.
The trademark you select may be (a) arbitrary, (b) suggestive, or (c) descriptive. An arbitrary trademark is unrelated to the goods, it does not describe the goods, a characteristic of the goods, or some geographical relation of the goods. A suggestive trademark suggests the goods or a characteristic of the goods; an example is HALO for shampoo–it suggests brightness, for example. A descriptive trademark describes a characteristic of the goods; an example might be TRAVELFAST for travel agency services.
Usually a descriptive trademark is easiest to advertise and is the fastest to acquire recognition; a suggestive trademark less so; and an arbitrary trademark least so. However, the strength and scope of a trademark usually is inversely related to the ease of advertising and acquiring recognition. For example, the trademark KODAK® did not have a meaning prior to its use in the photography field–it was a coined word with no prior meaning; it is a strong trademark that is recognized worldwide. In contrast, the descriptive trademark TRAVELFAST probably would be relatively weak, even to the extent that other travel agencies may write in literature that people who use their services are able to "travel" quite "fast" to the intended destination.
With the above in mind, I advise considering arbitrary trademarks for your goods/services.
Selecting A Trademark
The primary test for determining whether a proposed trademark would conflict with an existing trademark is based on likelihood of confusion. More particularly, would an ordinary consumer seeing or seeking to purchase your product and a prior product which are offered under respective trademarks be likely to be confused as to the source or origin of the respective products? If affirmative, then absent extenuating circumstances, there probably would be a conflict. Consideration is given to whether there are any identical or similar trademarks for identical or similar goods; and if there are several similar or identical differently owned trademarks, do they compel each to be relatively limited to the narrow scope of the goods for which they are registered?
YOU can do a preliminary screening to check whether a trademark you are considering is available for you to use for your goods/services. For example, YOU can use an on-line search engine, such as Google, Yahoo, Alta-Vista, MSN, etc.; put into the search engine various forms of the trademark you are considering and see whether any other people or companies are using the same or a similar trademark, trade name, domain name, etc.
There are several different types of searches. Usually I initially do a preliminary on-line search in the free Federal trademarks database of the U.S. Patent and Trademark Office. I can also do a more extensive search in a “pay” Dialog database of Federal and State trademarks. I usually advise having a full trademark search made; I ordinarily use Thomson & Thomson of Boston to make a full trademark search. A full trademark search includes the Federal and State trademarks databases I can search on-line, and also includes a number of common law trademarks and trade names databases which I cannot search on-line. In a full search, the searcher also can search the federal and state trademarks databases for homonyms and/or synonyms, which I cannot do economically.
Although a full search is not a guarantee of availability, it is the best way we have available to determine the availability of a proposed trademark, in my opinion.
A favorable opinion based on a full trademark search would be based on the facts as we know them, i.e., from the search results. It is possible that the owner of a trademark found in the search or of one not found in the search may assert a claim for an infringement, seeking injunctive relief and/or monetary damages. In our experience, it is unusual to encounter such a conflict after having had a full search made and not finding what appears to be any conflicting trademark in the search results.
Adopting a trademark
You apply the trademark to your goods or advertise your trademark in connection with your services. I advise that you print the trademark on packaging, labels and/or tags that are applied to or fastened to the package or to the goods themselves. You may also print, emboss, mold, paint, etc., the trademark directly to the goods. In other words, the trademark must be applied to the goods. For a service mark, use may be on a sign at a store that offers retail services, or use may be in a printed advertisement that advertises the services that are offered under the trademark. Other types of trademark use may be possible. The trademark should be prominently shown.
It often is advisable to identify an unregistered trademark by the symbol "TM" or an unregistered service mark with the symbol "SM", e.g., SWEETIE PIETM Cakes, or SPARKLESM Window Cleaning Service. After a trademark has been registered, it is appropriate and advisable to use the registered trademark symbol with the trademark, such as XEROX® Copier. The registered trademark symbol should not be used unless the trademark already has been registered.
Be careful to avoid using a trademark as a noun, whether on packaging, in advertising or otherwise.
Trademark Registration
There are advantages to registering a trademark with the U.S. Patent and Trademark Office (USPTO). Several of these advantages include presumption of ownership and right to use the trademark; enforcement rights, namely the right to litigate trademark infringement issues in Federal court and certain damage rights under Federal law; incontestability of a trademark after it has been registered and in continuous use for more than five years, provided an affidavit/declaration requesting incontestability is timely filed, (an incontestable trademark registration usually cannot be revoked absent a fraud issue); notice advantages (the registered mark can be found on the Principal or Supplemental Register); and priority rights. It usually is advantageous to apply to register a trademark as soon as a decision has been made to adopt it to obtain priority over other trademarks.
If you would like us to prepare an application to register a trademark for use in connection with your goods and/or services, please let me know and I will be glad to prepare the application.
An application for Federal trademark registration can be filed based on actual use of the trademark in interstate commerce. It can also be filed based on bona fide intent to use the trademark in interstate commerce even though the trademark is not yet being used. In the latter case, the registration process cannot be completed until the trademark has been used and specimens evidencing use are filed with the USPTO. Exemplary specimens would be packaging on which the trademark is printed, labels that are applied to the goods, etc.; exemplary specimens for service marks would be a photograph of a sign showing the trademark in front of a store, an advertising brochure, a newspaper or magazine advertisement, etc.
Please note that trademark rights are national in scope. For business reasons, it might be desirable to obtain a regional Community Trademark Mark (CTM) to protect the Trademark in the countries included in the European Community or to obtain a trademark in other foreign countries of interest. United States companies contemplating foreign business are well advised to protect the right to use the trademark in the foreign countries of interest by filing in each foreign country (or in the CTM), preferably within six months of the U.S. Trademark filing to obtain the benefit of the United States Trademark filing date.
Trademark Application Filing Procedure
A trademark application can be signed by an authorized officer of the applicant or by the applicant’s attorney.
If the trademark is in use, I advise that I prepare the trademark application for you (a) fill in the dates, that you provide to me, for first use and first use in interstate commerce and (b) sign the application. You would complete a Trademark Order Form which would include all the necessary requirements for filing the Trademark along with two identical specimens showing the trademark as used.
If you have a bona fide intent to use trademark, but it is not yet in use, you can phone me with instructions to file the trademark application. I usually am able to file the trademark application electronically on-line the same day I receive your instructions. We could file specimens (along with an additional specimen filing fee) at a later time.
Trademark Application Prosecution Procedure
After the trademark application has been filed, it will be assigned to a Trademark Examining Attorney at the USPTO. The Trademark Examining Attorney will review the application to determine whether any formal revisions have to be made. For example, the Examining Attorney may require a more specific or clearer identification of the goods/services statement in the application. The Examining Attorney also will review other trademark registrations and pending applications for trademark registration to determine whether there appears to be any conflict with your trademark. If there is a conflict, the Examining Attorney will advise us. The test to determine whether there is a conflict is the "likelihood of confusion" test; namely, would a user of your goods/services be likely to be confused between your goods/services and those offered by another who use the same or similar trademark.
If the Examining Attorney refuses registration based on such a conflict, we would have the opportunity to respond to the refusal by arguing reasons why your use of your trademark would not result in a “likelihood of confusion”. It is possible that such an argument would be successful. It is also possible that the argument would not be successful, in which case the refusal to register would become final.
If the application is approved for registration, the USPTO will publish the trademark for opposition. Interested third parties may, within 30 days immediately following the publication date, oppose issuance of a registration, i.e., grounds of conflict with the opposer’s trademark. The 30 day period can be extended by the third party upon a request filed with the USPTO.
If no opposition is filed, the USPTO will issue a Federal trademark registration certificate.
The usual time frame for completing the registration process is approximately one year plus or minus several months, depending on the backlog of the Trademark Examining Attorney to whom the application is assigned for examination.
I try to keep my client closely informed of all issues and activity pertaining to their trademark application. I do so by sending copies of all correspondence received from the U.S. Patent and Trademark Office and the Trademark Examining Attorney. I also forward copies of all correspondence sent to the U.S. Patent and Trademark Office on your behalf.
If you have any questions regarding a Trademark Application, contact Howard Cohn at howard@cohnpatents.com or at 1-800-613-0955.
Post Trademark Registration
To keep a Federal trademark registration in force an Affidavit/Declaration of Use under Section 8 of the Trademark Act must be filed within the time period between the 5th and 6th anniversaries following the issue date of the Federal trademark registration (the registration date). If such use has been continuous and exclusive, we also can apply at the same time for the registration to become incontestable under Section 15 of the Trademark Act. On most occasions, we prepare a joint Affidavit/Declaration for both Section 8 (use) and Section 15 (incontestability) for our clients. However, if a trademark has not been in continuous exclusive use then we would prepare only the Section 8 Affidavit/Declaration.
Renewal of a Trademark Registration
The term of a trademark registration under the current law is ten (10) years. However, a trademark registration can be renewed at the end of each ten year term for an additional ten year term, provided the trademark still is in use.
If you have any questions regarding Copyrights, contact Howard Cohn at howard@cohnpatents.com or at 1-800-613-0955.
COPYRIGHT BASICS
What Is A Copyright?
The term ‘copyright’ refers to a number of exclusive rights granted by the United States government to the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works, whether published or unpublished and regardless of the nationality or residence of the author. A copyright protects the author’s original expression as contained in the work. It is important to note that a copyright does not usually extend to ideas, procedures, processes, methods, systems, discoveries, names or titles.
What Does A Copyright Protect?
A copyright protects Literary works, Audiovisual Arts, Performing Arts and Sound Recordings.
• Literary works include fiction, non-fiction, poetry, prose, catalogs, ad copy speeches, software codes and computer programs.
• Visual Arts include paintings, drawings, photographs, sculpture, maps, graphic designs, cartoons, unique package designs, technical drawings, architectural works and web site designs.
• Performing Arts include musical compositions, dramatic works, scripts, choreography, motion pictures, and other multimedia or audiovisual works.
• Sound Recordings include published and unpublished sound recordings of musical, dramatic, or literary works.
How Does One Obtain Copyright Protection?
Copyright protection arises automatically when an "original" (owing its origin to the author) work of authorship is "fixed" (sufficiently permanent to permit it to be perceived, reproduced, or otherwise communicated) in a tangible medium of expression. Registration with the Copyright Office is optional, but is required before an infringement suit can be filed. Early registration is advantageous because it makes the author eligible to receive attorney's fees and statutory damages in a future lawsuit.
What Is The Scope Of Protection?
Copyright ownership protects against copying the "expression" in a work as opposed to the "idea" of the work. The difference between "idea" and "expression" is one of the most difficult concepts in copyright law. The most important point to understand is that the protection of the "expression" is not limited to exact copying, but can extend to copying that is "substantially similar."
A copyright owner has the exclusive right to:
• Reproduce copies of the original work;
• Authorize others to make copies of the original work;
• Make derivative works that are based on the original work;
• Distribute or market copies of the work;
• Publicly perform or display the copyrighted work; and
• Obtain court relief in the event others infringe the copyrighted work.
What Is The Term Of Copyright Protection?
Three factors determine the term of copyright protection:
• Who created the work;
• When the work was created; and
• When the work was first commercially distributed.
The duration of a copyright, for works created by individuals, is the life of the author plus 50 years (for works created after January 1, 1978). For "works made for hire" (see next paragraph), the copyright term is 75 years from the date of first "publication" (distribution of copies to the general public) or 100 years from the date of creation, whichever expires first.
Who Owns The Copyright?
Generally, the copyright is owned by the person (or persons) who created the work. However, if the work is created by an employee within the scope of their employment, the employer owns the copyright because it is a "work for hire." The copyright law also includes another form of "work for hire", i.e. certain types of works which are specially commissioned works. In order to qualify the work as a "specially commissioned" work for hire, the creator must sign a written agreement stating that it is a "work for hire" prior to commencing development of the product.
I try to keep my client closely informed of all issues and activity pertaining to their Copyright application. I do so by sending copies of all correspondence received from the Copyright Office and the Copyright Examiner. I also forward copies of all correspondence sent to the Copyright Office on your behalf.
