How do I know if I need a patent, trademark, or a copyright?
Patents, Trademarks, and Copyrights are three types of intellectual property protection. They are different and serve different purposes.
- Patents protect inventions, and improvements to existing inventions.
- Trademarks include any word, name, symbol, or device, or any combination, used, or intended to be used in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Service marks include any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
- Copyrights protect literary, artistic, and musical works.
Do I need a Patent or Trademark lawyer?
Obtaining intellectual property (IP) protection can be a complex and challenging process. You may file a patent or trademark on you own, but going up against the United States Patent and Trademark Office (“USPTO”) on your own subjects you to some extremely tough procedural or substantive rules and prosecution practices
. If you have received an office action rejecting your application, you know what we mean! For example, a patent application is written in an arcane format and style. Did you know using an “a” or “the” in the wrong place in your claims can cause your entire application to be rejected.
Filing an application can save you money, but the savings costs often times are later spent with an attorney trying to save or redeem a rejected application. We represent many clients having filed their own patent or trademark application only to spend significant time and money trying to repair and correct the application while also trying to prevent any long term damage. To use the words of the USPTO “we strongly advise you to contact a registered patent attorney” or “we strongly advise you to contact an attorney experience in trademark prosecution”. We couldn’t say it better ourselves.
What is a Registered Patent Attorney and how are they different than other attorneys?
Not every attorney is or can be a Patent Attorney. First, to become a lawyer, a lawyer must attend law school and pass a state bar examination. However, a registered patent attorney is also admitted to practice in front of the USPTO. In order to become a registered patent attorney, the patent attorney must take and pass a Patent Bar Examination in order to be registered and licensed with the USPTO. Only lawyers with a scientific education (e.g., electrical engineering degree, mechanical engineering degree, biology, chemistry, physics, computer science, etc.) can take the Patent Bar Examination. In other words, a Registered Patent Attorney can be viewed as both “scientist” and “lawyer”. A lawyer without registration to the USPTO in unable to prepare and prosecute a patent application.
Why should I file a Patent Application?
To protect your idea! It’s that simple. It’s a race to the patent office and if you don’t file, someone else will. They’ll take that idea and then take it to market to earn a profit, which may include simply licensing others to use their idea! In many instances the lifeblood of a business is the actual value of a patent or a portfolio of patents. Don’t believe us? Ask the pharmaceutical industry or computing industry where a single individual or company can earn thousands up to hundreds of millions of dollars through a successful licensing program. A patent is an asset and assets have value. Why not transform your idea into a valuable asset?
How long does it take to get a Patent?
After filing the patent application, the average wait time until the USPTO provides initial results of a Patent Examiner’s first substantive review and examination ranges anywhere between 18 and 24 months. In some cases, from “start” to “finish” (e.g., filing to receiving a notice of allowance) the process may be about 2 to 3 years! (See the current wait time statistics at the USPTO website [here
How soon should I file a patent application after I have an idea or invention?
Under the America Invents Act (AIA), the United States is a “first to file” (FTF) system, which means that the right to the grant of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of actual invention. That is, if you don’t file before someone else files a patent application at the USPTO, you lose! The risk of waiting to file a patent application is simply too great. Waiting to file for the “perfect moment” may forever foreclose the ability to obtain a patent.
"Patent pending," what does it mean?
“Patent pending” indicates that a patent has been applied for on an invention but that a patent has not yet been granted.
Do I need to mark my items I sell if I have a patent on the item I sell?
Yes! As stated by the USPTO a “patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word “patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.” The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent.
How long does a patent last?
The term of exclusive rights to a patent lasts for 20 years from the date the application is filed.
What is an Office Action?
After you file a patent application or a trademark application, the USPOTO may issue what is called an office action. The Office Action is an official letter from the USPTO representing a patent or trademark examiner’s review of the pending patent or trademark application. When an office action is issued on your patent application or trademark application, the Office Action can be something as serious as a refusal of your patent application or trademark application, or, may be a minor request to amend something in the application.
Does using a Trademark Attorney increase my chances of obtaining a trademark?
YES! We repeat! YES! Did you know that a 2013 study reported in the wall street journal (WSJ) found that Trademark applicants represented by a trademark attorney are 50% more likely to receive approval for a registered trademark from the USPTO compared to those persons filing a trademark application without an attorney. (link found here: http://blogs.wsj.com/law/2013/04/10/when-it-helps-to-have-a-lawyer/)
How long does it take to get a Trademark?
Depends. After filing the trademark application an initial response from the USPTO on average is received between 3-5 months. However, total application processing time may be between 6 months up to at least a year. The overall time frame is based in large part on the filing bases and other legal challenges or issues that may surface during the trademark examination by the USPTO.
I’ve been using a mark (e.g., word, name, symbol, or device) for years and never filed a trademark application. Do I have any protection?
Mere use of a “trademark” in interstate commerce is enough to create what is known as a “common law trademark” if the trademark is distinctive and has created a “secondary meaning. This may also be referred to as an “unregistered trademark.” A significant distinction of an unregistered trademark is that the trademark owner does not receive as much protection as the owner of a federal or state registered trademark. For example, in the United States a trademark registered by the USPTO can enforce the trademark in all U.S. states, sue for damages (including lost profits), and may recover attorneys’ fees and costs incurred in protecting the trademark against infringement. If a trademark owner registers in a state, the trademark owner can enforce the trademark throughout the entire state, and receive similar statutory remedies. While an unregistered trademark may create some minimum level of protection it should never be considered as a viable and valid alternative.
When can I use the ® trademark symbol?
You may be familiar with the two symbols commonly used on a Trademark: the “TM” or “®”. A person or business may use the “TM” symbol indicating a desire to claim a trademark. Using the “TM” symbol puts the competition on notice of what you consider to be your trademark. There are no requirements to filing any legal paperwork for using the “TM” symbol. However, the ® symbol is reserved only for use by trademarks “REGISTERED” with the Unites States Patent and Trademark Office. YOU MAY NOT USE THE “®” symbol while you have a trademark application pending at the USPTO. We advise our clients to use the “TM” before or after they file their trademark application and then use the “®” after their trademark has been examined and received registration with the USPTO.
Where do you place the “TM” symbol or the ® symbol?
Place the “TM” symbol or the ® symbol in a prominent location to provide immediate notice. Typically, the “TM” symbol or the ® symbol will be place to the upper right of the mark such as, for example, “Coca-Cola®”, or “IBM®”.
What is the difference between Federal Trademark and a State Trademark?
Trademarks may be filed at either the state or federal level. State trademarks protect your mark in a specific state while federal trademarks normally protect your mark in all the states. State trademarks generally provide far less legal protection than federal trademarks. Businesses operating in only one state should trademark in that state. However, businesses operating in interstate commerce
may file for a federal trademark.
What is Interstate Commerce?
You must conduct business in “interstate commerce” in order to receive a registered, federal trademark. To operate a business via “interstate commerce” you are: (i) conducting business across state lines which means doing business in two or more states; or, (ii) conducting business internationally which means between at least one U.S. state and one foreign country.
What if someone is already using a trademark that I want?
If someone or some other business is offering the same or similar goods and services
(repeat: the same or similar goods and services)
, and the other person or business has already registered the trademark federally the you are prohibited from using the mark. We recommend finding another name to trademark. However, if the other person or business has not trademarked the “mark”, but they are the first to use the name and have used the mark extensively throughout the United States you are pretty much out of luck depending on the scope of use of the trademark. However, if they only use the trademark on a local basis such as, for example, using the trademark only in local area, then you may be able to register the trademark federally and use it in those areas outside of that localized area.
Example: Let’s assume another person has used the trademark in Florida and only done business in Florida. You can still register the trademark at the federal level and use the trademark nationally. However cannot use it in the State of Florida. Oh, read the next question! It is critical.
If I register a specific name as a trademark, can I prevent everyone from using my trademark?
No. You can only prevent others from using the same or similar trademark only for those goods and/or services you sell (e.g., in the same class of goods/services).
For example, if you sell sunglasses using a registered trademark you have the right to prevent others from selling sunglasses using a trademark which is the same or similar to your registered trademark. However, other persons or businesses may use your trademark to sell unrelated goods or services such as, for example, automobile tires.
Additionally, a federal trademark extends protection to persons or businesses selling goods or services in the United States and/or between a foreign country and the United States. However, you may register your trademark internationally in other countries if you desire to prevent other persons or businesses from selling the same or similar goods or services between 2 or more foreign countries using your federal (registered) trademark.
Can I trademark my Domain name?
Yes, but you must use your Domain name to identify or distinguish your goods and services from other persons or businesses. Using your domain name simply as your Domain Address is not typically not enough to obtain federal registration. However, using your Domain name as your business name, for example, can make registration.
How much does it cost to maintain my registered trademark?
There are no additional filings or fees within the first five years of ownership. However, the first renewal is due between the fifth and the sixth year after you have registered your trademark. To keep a registered trademark alive, the registration owner must file required maintenance documents at regular intervals. Failure to file the required maintenance documents during the specified time periods will result in the cancellation of the U.S. trademark registration or invalidation of the U.S. extension of protection. The USPTO will NOT notify you of the filing fee due date. It is your sole responsibility to remember to make this follow-up filing.
What are the advantages and disadvantages of Provisional Patent Application?
Advantages – Provisional Patent Application
By filing a United States provisional patent application with the USPTO, an inventor is afforded certain benefits from the filing date.
- Can use the term “Patent Pending” on or in connection with the invention during the 12 months following the date of filing the Provisional with the USPTO.
- A subsequently filed regular non-provisional patent can be treated as a prior art reference against other patent applications of competitors as of the earlier provisional patent application filing date.
- By filing a provisional patent application first and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application period. The patent-term endpoint may be extended by as much as 12 months.
- Preserve a right to file a non-provisional patent application when the provisional application is filed before publication of an article about the invention.
- Remain secret from the public until cited in a subsequent regular non-provisional patent application.
- The provisional patent rights allowed immediate commercial promotion of the invention with greater security against having the invention stolen while commercial markets are tested.
- A 12-month application period allows the inventor time to further develop the invention or to resolve problems prior to filing a regular United States non-provisional or foreign patent application.
Disadvantages – Provisional Patent Application
- The provisional patent application will not be examined by the USPTO.
- If a provisional patent application inadequately discloses the invention, a subsequently filed non-provisional application may not be accorded the priority date of the provisional filing date.
- A provisional patent application only has a 12-month life subsequent to the provisional application filing date and will automatically expires 12 months after the provisional application filing date. The inventor must file a regular non-provisional application claiming benefit of the earlier provisional application filing date in the PTO or in any foreign country in which patent rights are to be obtained before the United States provisional application period expires to preserve any benefit from the provisional application filing. If the 12-month provisional application period expires before a corresponding non-provisional application is filed, the inventor will lose the right to the benefit of the provisional patent application filing date.
- Inventors should beware that if the invention is “in use” or “on sale” in the United States during the 12-month provisional application period, and the 12-month provisional application period expires before a corresponding non-provisional patent application is filed, the inventor may lose the right to file a non-provisional patent application in the United States and in foreign countries and obtain patent protection.