Kenneth Avila, Esq. - Patents, Trademarks, and Business Law
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How Good is Your Trademark?

2/25/2018

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Not all trademarks are created equal.  The more distinct your trademark is the better it is.  Trademarks that are more generic may need to be registered in the supplemental register instead of the more powerful principle register or worse yet simply be refused.  Courts divide trademarks into five different categories, ranked by degree of inherent distinctiveness. Arbitrary, fanciful and suggestive trademarks are the easiest to protect, descriptive marks offer protection under certain circumstances and generic marks never offer protection. When contemplating a trademark for your business, you should always strive to choose (and register) trademarks that can comfortably fit into one of the three strong trademark categories.

Fanciful Trademark: A fanciful trademark is made-up, invented for the sole purpose of functioning as a trademark. This is also called a neologism when it describes a single word. Kodak and Exxon are famous examples of fanciful trademarks. George Eastman, creator of the Kodak trademark, had some simple yet profound advice on what makes a good trademark: he said it should be short, vigorous, easily spelled and meaningless.  I highly recommend his advice!

There are websites that create made up words that you may use for your business.  Search for "business name generator" to find them and have some fun.
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Arbitrary Trademark: An arbitrary trademark has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.

Apple (computers) is a good example of this type of trademark. We all know that the common meaning of apple is as a fruit, which is pretty far removed from the 
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digital world (insert your own lame “byte” joke here). In the case of less edible and more digital Apple, this choice of trademark (rumored to have been an impulsive decision based on a temper tantrum by the legendarily cantankerous Steve Jobs) actually has been quite costly. Apple had been established as a trademark by virtue of being the name of the Beatles’ record company (Apple Corps). As a result, Apple Computer has lost a couple of very costly court battles related to its foray into anything musical.

Another example of an arbitrary trademark is the online retail giant Amazon.  Many people probably don't know that Amazon is the name of the worlds largest river but even so there is no relationship between the two making Amazon a great trademark for the online retailer.
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Suggestive Trademark: A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well known suggestive trademarks.

Many marketing professionals prefer suggestive to arbitrary or fanciful trademarks because the latter plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.

Descriptive Trademark: A descriptive trademark merely describes some portion of the goods or services to be sold under the mark. Courts often use the guidelines that a trademark is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods”. Descriptive trademarks may only achieve substantial federal protection if they acquire “secondary meaning” –which typically takes at least five years and a significant advertising 
budget. Thus, owners of trademarks that walk the line between descriptive and suggestive obviously want to convince the trademark office that their trademark is actually suggestive.  Another option is for owners to register on the supplemental register and wait five years to upgrade to the principle register.

Generic Trademark: A generic trademark can not be protected as a trademark because it describes a category of product or service. This is a matter of public policy; the federal government has determined that free use of such categorical trademarks benefits consumers.  An example would be registering for a trademark "HAIR SALON" for your hair salon business.  The trademark office will reject your application because many hair salons will want to use same words in their trademark.
5 Comments

What is a Design Patent?

11/19/2017

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Many people are confused about design patents as compared to utility patents or do not even know that design patents exists.  Adding to the confusion is that both design and utility patents may be used to protect the same invention.  So when should you use a design patent and when should you use a utility patent?  You may answer that question by asking yourself the question "Is what I am trying to protect function or decorative?"  For example, say that you have come up with a new pattern of tread that you want to use on a snow tire that is to be sold.  Lets say that your new tread pattern provides your tire certain advantages on snow over current snow tires.  Since your new snow tire is more "functional" than current snow tires then you will want to obtain a utility patent on your new tread pattern.  Conversely lets say that your new tread pattern gives your snow tire the "appearance" that it performs well on snow but in reality it doesn't; It just looks really cool, rugged, and mean.  Since your new pattern is decorative then you will seek a design patent on it.  Beware, using this example say that you know that your new tread pattern provides better performance on snow over other snow tires but to cut costs you seek a design patent on your new pattern.  If your competitor can provide that your new pattern is functional then your design patent will be revoked and you will not have the opportunity to go back and get a utility patent on the tread pattern; in effect you will lose all rights to any sort of patent.

Below are design patents for the Crocs shoe, Chrysler Crossfire, Apple iPad screen layout, and a tire tread pattern.​

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​​Design patents are a cost-effective mechanism to add value to a company and combat the counterfeiting of products when protecting ornamental features.  For more details contact me.
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Interested in a patent?  Contact me between 11/12 to 11/16 to schedule a free consult on patents.

11/11/2017

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Do you have a new idea but don't know how to best protect it?  Do you know the importance of the dates when you first show your invention to the public or file a provisional patent?  Do you know what requirements are to be satisfied before the patent office will grant your patent application?  There are many issues to consider before and during the application process and unless you are aware of them you could lose your rights to a patent. 

This week I am offering free 30 minute consults on patents.  The consults may be over the phone or using internet based video conferencing.  During the consult I will review with you the patenting process using a flowchart that depicts the process.  If you are interested here is what you need to do:

  1. You will need to contact me via email to request the free 30 minute consult between November 12 and November 16.  My email address is displayed in the top right corner of this webpage.  We will then setup a time via email.  Please do not call me regarding this offer.  
  2. You will need to download and print my flowchart that depicts the patenting process before the consult.  Navigate to my IP Websites page and then look for the link "Flowchart Depicting the Patenting Process" in the "Attorney Online Forms and Downloads" section.
  3. If you miss our appointment or you do not have my flowchart printed out before the consult you will forfeit your free consult.

I look forward to meeting each of you!

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Defamation.  Does it happen in the business world?

11/4/2017

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We all know what defamation is.  Often it is in the news when one celebrity claims that another celebrity said something false about them.  One of the better known cases is between Bill Cosby and a number of women over allegations of rape.  Defamation has lots to do with hurting someone's reputation and although we are most acquainted with cases between two people it can also happen between two businesses.  If a first business damages the reputation of a second business then the second business may have a cause of action against the first business.  The cause of action is not called Defamation but "Trade Libel".

Trade Libel has a few cousins that in some ways overlap.  They are:

  1. Intentional Interference with Prospective Economic Advantage:  Used when the defendant intentionally disrupts or diverts the business relationship of another by improper methods which fall outside the boundaries of fair competition.
  2. Negligent Interference with Prospective Economic Advantage:  Similar to the above but is not done intentionally.  Rather the defendant acts unreasonably and wrongfully.
  3. Unfair Competition:  Here the California Business and Professions Code §17200 prohibits any "unlawful, unfair, or fraudulent business act or practice" and any "unfair, deceptive, untrue or misleading advertising".

If you would like to have me post a blog on one of the above let me know but for now lets discuss Trade Libel. 

Trade Libel occurs through the publication of a false statement that intentionally disparages the quality of property and induces another not to deal with the plaintiff, which causes the plaintiff actual pecuniary damage.  Key cases in California courts include Polygram Records, Inc. v. Superior Court, Nichols v. Great American Insurance Companies, and Erlich v. Etner.

To give rise to a cause of action for Trade Libel the plaintiff must prove the following elements:

  • A False Statement:  Whatever was said or written by the defendant was false.  To be actionable the statement by the has to be an assertion, not an opinion (Hofmannn Co. v. E.I. Du Pont de Nemours & Co.)
  • The Statement was Disparaging:  This may seem a bit obvious but clearly the defendant's statement must disparage the plaintiff (Nichols v. Great American Insurance Companies).
  • The Statement was Published:  The defendant must have communicated the disparaging statement orally or in writing (Guess, Inc. v. Superior Court).
  • The Statement Induces Others not to Deal with the Plaintiff:  The plaintiff must show that defendant's statement played a material and substantial part in inducing others not to deal with him.
  • The Inducement causes Plaintiff Harm:  The inducement must be shown to have caused harm to the plaintiff.  The plaintiff cannot just show a general decline in his business.  Plaintiff must identify transactions and customers lost as a result of the inducement.

Defendant also has defenses that they may present in court to defeat a claim of Trade Libel by the plaintiff.  These defenses include Statute of Limitations, Absolute Privilege, Qualified Statutory Privilege, and Constitutional Privileges.

As you can see, the plaintiff has their work cut out for them to prove that the defendant is liable for Trade Libel.  In particular the element of proving the harm that was caused by defendant's inducement.  However an "ounce of prevention is worth a pound of cure" so be careful with statements that you make.  Check your facts and dot your i's and cross your t's when making a disparaging statement about another business or just not make such statements at all.

This blog posting is just a brief introduction into Trade Libel.  I recommend that you consult an attorney whenever:

  1. You have been accused of making a disparaging statement;
  2. You have received a disparaging statement; or
  3. You plan on making a disparaging statement.

A qualified attorney can help you with determining your legal risks and minimizing them.

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Beware of Invention Promotion Scams!

10/28/2017

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Do you want to save yourself $10,000?  That is about how much you will be paying those "invention assistance companies" you see on TV.  Be very careful when dealing with them and the promises they make.  I have read a number of agreements offered by these companies to inventors and all of them have many terms that are not in favor of the inventor.  Yet every year many inventors will hand over thousands of their hard earned money to these "invention assistance companies" and get very little as a result.  So what should you be looking for when you approach one of these companies?  I would say body armor, but seriously here are some pointers:

  1. Offers of a free review of your invention.  What did you mother tell you about free things in life?  Listen to your mother.  "Free" is their hook to bring you in contact with their professional sales person who will then do what professional sales people do - make a nice commission off of you.
  2. Market evaluation report.  The first thing their professional sales person will do is tell you that a market evaluation report needs to be performed.  Very likely that report will indicate that the market potential for your invention is great.  Of course their market evaluation report will say that because it is a lead in for the big dollar items that come next.  The purpose of the report is to get you excited enough to take the plunge.
  3. "Poor Man's Patent".  Some of these companies will tell you to protect your idea by writing it down, putting it into an envelope, mailing the envelope to yourself, and then not opening it.  You will gain no legal protection by this process and your idea remains open to copycats who see it.
  4. Agreements.  Once they have excited you with their market evaluation report they will offer you marketing services with brochures, TV ads, and phone banks.  But they will need to get you to sign an agreement first.  The agreement is key because the agreement will protect the invention assistance company from being sued by you!  Always have an attorney review the agreement and explain the risks you are taking by signing the agreement.

Because of the number of inventors being taken by invention assistance companies the US government has written 35 USC 297 to protect inventors.  35 USC 297 is nice but it is best to talk with an attorney first before signing the agreement.  

35 USC 297 allows you to ask the invention promoter the following:
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  1. The total number of inventions evaluated by the invention promoter for commercial potential in the past five years, the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations.
  2. The total number of customers who have contracted with the invention promoter in the past five years, excluding those who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter.
  3. The total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by the invention promoter.
  4. The total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by the invention promoter.
  5. The names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.

Finally an attorney has certain ethical duties owed to their inventors.  An invention promotion company owes no such ethical duties.  An attorney who breaches their ethical duties to a client may lose their license to practice law in their state and to represent inventors before the patent office.  Those licenses are very hard to get and represents years of hard work in school.

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What are Utility, Design, and Plant patents?

10/21/2017

3 Comments

 
There are actually three basic types of patents you may file with the patent office.  They are as follows:
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  1. Utility:  When most people think of patents they think of utility patents.  A utility patent protects the invention of a new and useful (i) processes, (ii) machines, (iii) articles of manufacture, (iv) formulas, or (v) a new and useful improvement of i - iv.  The non-provisional version of the utility patent permits the owner to exclude others from making, using, or selling the invention.  Approximately 90% of the patent documents issued by the patent office in recent years have been utility patents, also referred to as "patents for invention".  There are two kinds of utility patents: provisional and non-provisional available:  
    1. Provisional Utility Patent:  Provides a basic level of protection for an invention for a period of one year from its filing date in exchange for some simplicity.  For more information on provisional utility patents please see my FAQ.
    2. Non-provisional Utility Patent:  A very complex document that provides the full range of patent protection for a period of up to twenty years from the date of patent application filing upon grant.  For more information on non-provisional utility patents please see my FAQ.
  2. Design:  Following utility patents, design patents are the most commonly issued patents.  Design patents are used to protect new, original, and ornamental designs embodied in or applied to an article of manufacture and generally permits the owner of the patent to exclude others from making, using, or selling the design for a term of fifteen years from the date of grant.  For more information on design patents please see my FAQ.
  3. Plant:  Plant patents are rather unusual.  Plant patents are used to protect a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing.
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Not using your trademark?  Then say "Good Bye" to it!

10/14/2017

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Here in the United States you must use your mark in commerce else it will be considered abandoned and your competitors may seek to have it cancelled.  The reason for this is that trademark law serves to protect consumers and marks that appear and then reappear in commerce is confusing to the consumer and also prevents other businesses who may want to make more effective use of the mark from doing so thus harming the interests of consumers.  This stands in contrast to other forms of intellectual property law such as patents and copyrights which serves more to protect the creator of the patent or copyright.  

So you may be asking how long can you not use your mark in commerce before you run the risk of losing it?  15 USC 1127 holds that a mark shall be deemed to be abandoned if its use has been discontinued with intent not to resume such use and that intent not to resume use is inferred after three consecutive years of nonuse.  So your risk begins immediately when you stop using the mark in commerce but initially there is little to worry about as it is difficult for someone to prove that you no longer have intent to use the mark in commerce.  However, as time of nonuse increases, the risk grows and at the third anniversary of nonuse it is presumed that you no longer have the intent to use the mark in commerce.

Is there an exception to this rule?  The answer is no.  If you have not been using your mark in commerce you will risk losing it, especially after three years of nonuse, unless you can show an intent to resume use of the mark. So how can you show an intent to resume?  For starters you cannot just waltz into the trademark office and tell them that you intend to resume use.  The trademark office places a rather high bar on showing an intent to resume use and requires that the nonuse is due to special circumstances beyond the trademark owner’s control.  The Trademark Manual of Examining Procedure 1604 gives the following examples as a general guidelines as to what is considered to be a special circumstance that excuses nonuse where circumstances that are likely to prove nonuse in green while circumstances likely not to prove nonuse in red:
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  • Business Decision. Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
  • Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the affidavit requirement is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions.
  • Trade Embargo or Other Circumstance Beyond Owner’s Control. Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
  • Sale of a Business. Temporary nonuse due to the sale of a business might be considered excusable.
  • Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.
  • Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
  • Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence.
  • Negotiations with Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.
  • Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress.
  • Use of Mark on Different Goods/Services. Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.
  • Use of Mark in Another Form. Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.

​If you have not been using your mark in commerce yet you wish to keep your mark I suggest contacting a trademark attorney such as myself to help you argue that your special circumstances are sufficient to defend your mark from being cancelled.
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Who Owns Works Created by Artificial Intelligence?

10/7/2017

1 Comment

 
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​Artificial Intelligence, or AI for short, has been making rapid improvements over the past few years.  It seems so long ago when a computer called Deep Blue won its first chess game against a world champion in 1996.  However, some would argue that Deep Blue was not artificially intelligent but that it only processed computer code that would rank various moves and then pick the best ranked move.  After all, chess has a finite number of pieces that all move in a restrictive manner so in some ways chess is rather predictive and lends itself well to solutions by computer software.  Fast forward to the past few years and AI has been able to do some rather amazing things that previously was exclusively in the domains of humans.  Here are some examples:

  • Just a few months ago, Google, together with various news organizations, announced a venture whereby humans would find local news stories, feed key information to the AI computer, and then have the AI computer to write the story.  The focus of this venture will be with local news as many media outlets are experiencing commercial pressures and cutting back on local news.  The goal here is for the AI computer to create up to 30,000 local news stores a month complete with pictures, quotes, and facts just as with any news story.
  • Last year a Japanese AI computer co-authored a short novel, ironically called “The Day a Computer Writes a Novel”, that made it past the first round at the Nikkei Hoshi Shinichi Literary Award out of 1,450 submissions.  Writing a novel is a challenging task for a computer because (i) there are no right “answers” as there are with games such as chess and (ii) the novel has to be interesting to humans.  Also in the literary field a Google AI computer has been creating poems.
  • Another Google venture, called WaveNet, is tackling the problem of speech synthesis using AI.  Speech synthesis has come a long way since 1984 when Steve Jobs revealed the new Apple Macintosh computer and had the computer introduced itself by saying “Hello, I’m Macintosh”.  However, in spite of the improvements, humans are pretty quick to recognize speech as been synthesized.  WaveNet aims to change all that by using AI to synthesize speech that is undetectable from human speech.
  • In 2016, Microsoft and others, created an AI program that analyzed thousands of Rembrandt paintings and fragments and when presented with a human model the program created a painting that unmistakably looks like an original Rembrandt.  The computer generated artwork is shown along with this blog.
 
This all sounds exciting and scary at the same time.   In the past AI only played a very limited role when creating works of art by assisting the human creator in a particular aspect of the work.  Now computers running AI software are starting to replace humans in creating music, writing literary works, and painting works of art.  For intellectual property attorneys the question “Who owns the copyright?” is immediately raised.  The answer to the question is found by looking at the law.  Here in the United States the Copyright Office has declared that it will “register an original work of authorship, provided that the work was created by a human being” as case law held that copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.”  (Feist Publications v Rural Telephone Service Company, Inc. 499 U.S. 340 (1991)).  See also the first paragraph in Circular 1 - Copyright Basics published by the United States Copyright Office.
 
Here in the United States works of art such as music, literary works, and images that are created by a computer are not copyrightable.  The impact of this is that all works created by a computer are in the public domain.  Many other countries have similar laws which hold that only humans may obtain a copyright.  To the general public this may be desirable as these works of art will be free to copy.  However, such an outcome may cause technology companies to invest their billions on other technologies that have the potential to produce a revenue stream and thus hindering the development of AI software here in the United States.
 
Some countries, such as England and other commonwealth nations, have already changed their copyright laws to grant the copyright to “the person by whom the arrangements necessary for the creation of the work are undertaken” in the case of works created by a computer.  It is not clear how courts will define “arrangement necessary” but it is a start.
 
In many areas of life the computer has required that we rethink how some of our laws are written.  The day is approaching when the United States will have to rethink its copyright law to take into account AI.

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Types of Patent Searches

10/1/2017

7 Comments

 
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There are a number of different types of patent searches that may be perform.  Some patent attorneys farm out their searches to paralegals within their firm or worse to a search firm in another country.  In these cases a patent attorney only views the results of the search and the patent attorney has no clue as to the "journey" taken by the searcher.  The journey taken by the searcher is very informative in and of itself and quite helpful in the prosecution of a patent application as it gives the searcher a view of the patent "landscape" circling about the invention at hand.  It is like being on the ground of a thick forest and only seeing the trees about you rather than above the forest and seeing the entire forest.  As a result I disagree with with practice of farming out the searches.  I perform all of my own searches using special software applications that are professionally designed for searching patents across the many patent databases about the globe.  However, that said, examples of patent searches that I may perform include:
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  • Company specific search to determine a company's patenting activity.  By comparing a company's "patent trail" you may uncover what sorts of technologies a company is investing their time and money into.  With this information you may develop appropriate business plans to counter your competitor's investments.
  • Search based on a specific individual's patenting activity.  These searches are useful in knowing if a potential employee does hold the patents they are claiming in their resume, the patenting activity of employees in competing companies that you wish to hire, or to determine if a patent you are negotiating for is indeed owned by the party you are negotiating with.
  • Research as to patent activity in a particular market.  When investigating new markets it is always beneficial to research the number of patents that have been filed in that market and view a histogram as to the number of filings over time.  With this information you may determine how intellectually "crowded" that market is and how "hot" the market is.

There are other kinds of searches that may be performed in addition to those above but the two major types of searches that are typically performed by patent attorneys are (i) infringement and (ii) patentability searches.

Infringement Searches:  The infringement search looks to answer the question "Has your invention (i) already been claimed by an inventor (ii) in a patent that is still enforceable?".  

To determine if the first part of this test is satisfied we have to look in the "Claims" portion of the patent.  Basically a patent is comprised of three parts: figures; specification, also called the description; and claims.  The figures contains drawings of the inventive concept while the specification contains in words what is shown in the figures.  The claims, found at the end of the patent, describe the inventive concept that the patent actually protects.  The figures and the specification must fully support each other in that whatever is described in the specification must be supported by the drawings and the features in the drawings must be supported by the description.  The claims finds all of its support in both the figures and 
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the specification.  You may almost think of a patent as a triangle with the figures, specification, and claims at each point of the triangle.  If you take out any of the points you no longer have a triangle and likewise with patents.  Now that I have given you this background information on figures, specification, and claims, you may understand that infringement is determined by comparing the claims of a patent to your invention.  How close the claims come to describing your invention will determine your risk for infringing a patent.

Determining if the second part is satisfied is more difficult and unfortunately more important because if a patent is no longer enforceable it is in the public domain and free for all to copy.  You may think of the patent as having been expired.  You cannot infringe upon a patent that has expired but determining when a patent expires is not easy.  We know that an utility patent has a life span of 20 years while a design patent has a life span of 14 years.  Unfortunately there are other events that may impact the life span of a patent.  One event is if the patent office unnecessarily delays when processing your patent.  In these cases the patent office will add to the life span of the patent the same number of days where due to their actions your patent's issue date was delayed.  However this is rather unusual and typically amounts to less than 100 days being added to the life span of a patent. The one event that significantly impacts the life span of a patent is the nonpayment of maintenance fees that are due 3.5, 7.5, and 11.5 years from the date the patent was issued.  Even if payment is not made there is a grace period of six months where the patent remains enforceable if a payment is made along with an extra fee.

In spite of the problems in determining if a patent is enforceable infringement searches are easier to perform because:
  1. Only patents in the USA patent database need to be searched.  Almost 25% of the patents on the planet are registered in the USA and you are only liable for infringement if you infringe on a patent that has been issued by the USA patent office.
  2. Although the USA patent database has over 9 million patents most of those patents have expired for the reasons above.
  3. The claims portion of a patent is usually short making it easier to read.

Patentability Searches:  The patentability search looks to answer the question "Can you get a patent on your invention?". This question is very different than the question to be answered by the infringement search so the search is different.

For background, there are three requirements to secure acceptance of your patent application at the patent office.  These requirements are: 
  1. The invention must be useful and not abstract (§101).  This is an easy requirement to meet for nearly all applications.
  2. The invention must be novel, that is it must not have existed anywhere at anytime (§102).  This can be a difficult requirement to overcome as the not existed anywhere means anywhere on the planet.
  3. The invention cannot be an obvious idea or improvement  (§103).  This is the most difficult requirement to overcome as the patent office may combine patents or other document, taking concepts from each, and argue that by combining all of the concepts from each of the documents they may reproduce your inventive concept.
The first requirement is rather easy to meet and for the most part I can make a determination on this requirement when you come in for an initial consult.  However for some ideas that are more abstract, such as software or processes, it may not be so clear cut and I will have to perform some research to reply with an answer.

For the remaining two requirements we have to search through various patent databases.  However, unlike the 
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infringement search above where I would read through the claims to determine if your inventive concept infringes, the patentability search requires that I read through the longer and more difficult specification section of the patent to see if your inventive concept has been described.  This makes the search more time consuming than the infringement search.

As I find patents that relate to your inventive concept I quickly read through them marking interesting sections and then file them away.  Depending upon the various aspects of your inventive concept I may have to perform other searches to find patent activity that cover those aspects and repeat the process of locating patents and then marking interesting sections.  Note that here I do not filter out expired patents because expired patents may be used against your inventive concept to raise a novelty (§102) or nonobviousness (§103) refusal.  Once I have all of the relevant documents together I may now look at the risk of getting novelty (§102) or nonobviousness (§103) refusals.

Performing all of this takes a lot of concentrated study and thus the greater cost.  However it is a "must do" search as otherwise all of the money invested in drafting and filing the patent may be at risk.
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How "Incontestable" is an Incontestable Trademark?

9/23/2017

1 Comment

 
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Last week I posted in my blog an article that talked about the different levels of trademark protection one may obtain here in the United States.  The levels of trademark protection, from lowest to highest were:
  1. Common law (unregistered trademarks)​
  2. State registered trademarks
  3. Trademarks registered in the federal supplemental register
  4. Trademarks registered in the federal principle register
  5. Trademarks registered in the federal principle register with incontestable status.

​​In this article I will be taking a closer look at highest level of protection -- that of a trademark registered in the federal principle register with incontestability status.

First I want to make it clear that just because your trademark is incontestable doesn’t mean it cannot be contested.  Like so many other areas of the law there are exceptions.  So the word “incontestable” is actually somewhat of a misnomer and there are a number of grounds where an incontestable trademark may be attacked.  But before we get into that let us look at the benefits provided by incontestability that are above and beyond what is provided by registration on the principle register. 
  • The owner of the trademark needs to file for incontestability only once in the life of the trademark.  There is no need to renew the trademark’s incontestability status.
  • Rather inexpensive with government fees at $200 to $300 per class.
  • The trademark is immune to challenges based on descriptiveness such as (i) the trademark merely describes the goods or services, (ii) the trademark is primarily merely a surname, and (iii) the trademark is a geographic place name that will immediately convey a goods-place or services-place association in the minds of consumers.  This immunity applies both to challenges filed in the administrative courts at the trademark office as well as in federal court.
  • Potential infringers, upon seeing that your mark is incontestable, are more likely to respond favorably to a cease and desist letter.  This may be quite beneficial in reducing potential legal fees.

However, incontestability does not shield your trademark from the following kinds of attacks that all trademarks are susceptible to:
  1. Genericness;
  2. Functionality;
  3. Abandonment;
  4. Fraud on the trademark office;
  5. Immorality, deception, or scandalousness;
  6. Disparagement;
  7. False suggestion of a connection;
  8. Geographical indications on wines or spirits meeting certain requirements;
  9. Representation of a flag or coat of arms of any nation; or
  10. Representation or name of a living person without his or her consent or of a deceased president without the consent of his widow.

Some would argue that incontestability does not provide much of an advantage over a trademark that is registered on the principle register.  However I have found that telling a potential infringer that your mark is incontestable provides quite a punch to your cease and desist letter and encouraging the potential infringer to come to terms.

To claim incontestability status for your trademark you must prove that:
  • Your trademark has been in continuous use for at least five consecutive years from the date of registration;
  • Your trademark is currently being used in commerce;
  • Your trademark has been registered on the principle register;
  • There has been no final decision adverse to your claim of ownership or right to register the trademark;
  • There is no proceeding adverse to your claim of ownership or right to register the trademark that is pending;
  • It is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration; and
  • The mark has not become generic. 

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