Patent Help And Patent Law Articles| Foundation Patents

A. If you’re stuck with your mark “as is,” (can’t amend, can’t rebrand), then the key is to prove that no consumer could possibly be confused. You’ll need evidence. Online Reviews are best, reviews that repeatedly mention your brand name, your exact product, and your Word-Mark^TM as a memorable aspect of the product/experience.

B. Carefully watch the Registrant’s mark for abandonment (they may not pay the reissue fee by the 6-year deadline), therein leaving you/your mark as the last man standing. Delay your ROA (response to USPTO Office Action) until your ‘squatter’ competition goes abandoned. Even ask the Examiner to Suspend the Action until your competition goes abandoned.

C. Consent Agreement – (not my fav option): write your competition a proposal to Agree to Coexist (this technique rarely works, so probably best to forget this option and abandon your current-failed application for now, stay under the radar, and wait until the Registrant disappears or strays (rather than give a Registrant notice of your existence (a gift of a slam-dunk ™ Infringement Lawsuit against you)).

D. Brainstorm to think of a novel word you can live with, and amend to add this word to your Word-Mark as a prefix or suffix (or mid-wedge-word) to add your word mark. Look through your marketing material for a useful (novel/fanciful) amendment_word (check your website, your product labeling, your packaging) and then add it to your mark+logo (via amendment or a refile) to distinguish yourself. Then after ‘5-year incontestability,’ decide whether to drop the ‘throwaway word.’

Hope this helps!

Design Patents Stop Copycats

A design patent protects the novel shape, configuration and surface ornamentation of an invention rather than its mechanical novelty. Design patents protect the way something looks, not the way it functions (e.g. the shape of the old Coca Cola^® bottle, not its chemical composition or its method of manufacture).

Design patents are simple, affordable and enforceable. The litigation test for design patent infringement involves a visual comparison between the patented design and the accused copycat product.

The standard for design patent infringement is whether the accused design would appear “substantially similar to an ordinary observer [who’s familiar with various industry designs].”

Three Design Patent Rules to Keep in Mind

Design patents are all about the drawings, not the tech spec’s or the dimensions.

So, pick your favorite embodiment and get good M.P.E.P. Quality Drawings (your patent attorney will be a good design patent draftsman [or he’ll regularly commission one]).

The USPTO filing and examination fee is $255.

If you are successful in obtaining a design patent, your issue fee is $185 for micro-size companies.

Once a design patent has been issued, it lives for 15 years with 0 maintenance fees.

Novel GUI’s as Design Patents

Can I Patent my Website Screen?

The answer is Yes!

Is design patent protection available for a graphical user interface (GUI)?

Yes, it is possible to obtain a US design patent on a graphical user interface.

The patent examining rules refer to GUIs as “two-dimensional Computer-Generated Icons which may be statutory subject matter (read protectable) if they comply with certain guidelines [see MPEP 1504.01(a)].”

Keep in mind that a GUI design patent protects the ornamental appearance of the screen (“the look of it”), not its novel features, functionality or back-end network architecture.

How is a GUI patentable?

To meet the “article of manufacture” requirement under 35 U.S.C. §171, a GUI may be patentable if the two-dimensional image is shown on a computer screen, monitor, other display panel, or a portion thereof. Therefore, it is critical for a GUI design patent application to include certain features in the title and drawings:

Use a title such as “DISPLAY SCREEN OR PORTION THEREOF WITH GRAPHICAL USER INTERFACE.”

Another option is to tease-out what the GUI is really showing, and title the Design Patent Application in a fashion that matches the substance.

For example, for one inventor, a Bay Area tech-sales head-hunter who’d invented a novel platform for digesting salespersons’ resumes, I simply titled the Design Patent “Resume.”

The relative positions and shapes on his GUI (the key graphs and key menu dropdown locations of my client’s GUI (his website’s main platform screen)) are now protected against other headhunters’ “screens” who might be trying to show the same thing in the same way. He’s successfully patented “the look” of his novel resume, now [incidentally] memorialized on a screen as a GUI.

What’s Required in the Design Patent Drawings?

Besides showing the two-dimensional icon in black-and-white line drawings, the GUI design patent drawing should show at least the display area in broken lines (dashed lines). The figure may also contain an outer line of the device (e.g., tablet, smartphone, computer screen), also in broken lines.

The broken lines are shown for context only and form no part of the claimed design. A design patent application for a GUI must include statement explaining the broken lines, such as “The outermost broken lines in the figures show a display screen or portion thereof, and form no part of the claimed design.”

Is one view sufficient for a GUI design patent application?

Design patents for three-dimensional objects typically require at least seven views:

front, rear, top, bottom, left, right and 45° perspective elevational. Since a GUI is a two-dimensional image without structure, a single view may suffice.

However, as described above, if you use the technique of patenting the substance of the GUI (a thing that happens to appear, inter alia, on screens), then do the six-views.

Can a GUI design patent application contain multiple embodiments?

Yes, but only if all the embodiments in the application relate to one single design.

Practical Guide to Filing for a Patent

If you’re an inventor, you shouldn’t publicly disclose, publish, market, sell, advertise, or even discuss your invention with anyone for more than a year without filing a patent application. The USPTO offers a one-year grace period in which to file, after which, you will forever lose your intellectual property rights.

Your utility patent application will either be a provisional application, which sets your priority date and gives you “patent pending” status, or a nonprovisional application, which will be published and will comprise the basis of your issued patent. Read on to learn more about the process involved in filing both types of patent applications.

Provisional Patent Applications

Provisional patent applications customarily a good first step for most inventors. For openers, the USPTO filing fees for a provisional application are about 10% of what a nonprovisional application costs. More importantly, the provisional gives you one year to market and tailor your invention while you prepare to file your nonprovisional application. Just remember that only nonprovisional patent applications are examined by the USPTO, and only nonprovisionals ultimately receive patents.

The Nuts and Bolts of a Provisional Application

A provisional application includes:

A cover sheet
A written specification,
Drawings, and
The filing fee.

The fee is further reduced if you are a small or micro entity. Claims and oaths are not necessary in the provisional.

Provisional Drawings

Your provisional drawings need not be formal patent drawings with reference numbers, lead lines, and the other technical requirements of nonprovisional patent drawings. At this stage, you can use almost anything you like: screenshots of your website, CAD renderings, your flowcharts, photos, pencil drawings from your lab book, blueprints, or even napkin drawings if they are in PDF format. The only caveat is the drawings must be in black and white.

Provisional Specification

Your provisional specification will describe how to make and use the invention. It must contain as much detail as necessary to show someone of ordinary skill in the art how to make and use the invention without undue experimentation.

Write out all the alternative embodiments (variations) and applications (uses) you can think of. The prize feature of your innovation may turn out to be something you hadn’t initially considered. After all, Play-Doh was supposed to be wallpaper cleaner, the Slinky was supposed to stabilize naval instruments, and Viagra was developed for heart disease.

There’s no downside to wild creativity here; your provisional application will not be published or assigned a USPTO Examining Unit the way your non provisional application will.

Non provisional Patent Application

For the non provisional application, you will surely want to hire a registered patent attorney. Some registered patent attorneys initially charge for generating a Prior Art Search and Patentability Report. Others will simply include this work in their fee for preparing the application.

Your patent attorney will work with you to draft and file a formal specification, including background and a summary of the invention, formal drawings, and usually 20 claims, which ultimately form the boundaries of your intellectual property. When you are satisfied with the application, your patent attorney will file it via the USPTO’s EFS-Web system. The USPTO application fee will usually be paid through your attorney’s USPTO deposit account, which he or she will then pass onto you.

After filing, your patent attorney will then track the progress of your application on the USPTO’s Private Pair system. The USPTO will give various rejections, usually due to obviousness. Your attorney will then charge you to prepare Office Action Responses, usually with claim amendments designed to put your application in a condition for allowance (for issuance and publication in the USPTO Gazette).

Getting Legal Help

If you’ve poured years of development into your invention and it’s starting to sell, then failure to see a registered patent attorney within the year could be fatal. It’s in your best interests to gather your blueprints and your BOMs and go see your local patent attorney.

Enforcing Your Patent

Once you obtain a patent, you have the right to exclude others from making, using, selling or distributing your invention for 20 years from your initial filing date. Enforcement is a tricky enterprise, however. There’s no “U.S. Patent Police.” If you think your patent rights are being infringed by a product in commerce, you should know the steps you can take to enforce your patent.

First, you’ll need to find a patent attorney. Expect to forward an initial retainer, since patent law firms generally do not represent inventor-clients on contingency.

Finding Infringers

If you are a patentee-inventor and you are looking for infringers, there’s no magic trick. Other than scanning the market, the internet, trade shows, and industry periodicals, you might try attending conventions and conferences in your field. You might also consider selling your patent to a “patent troll” whose sole business is finding and forcing settlements with alleged infringers.

What Your Patent Attorney Will Do

Your patent attorney will first offer you an opinion letter comparing the potentially infringing conduct against your patent claims. If your patent attorney thinks you have a “slam dunk” case for infringement, and also believes that your patent will not be invalidated en route to victory, then you should proceed.

Cease and Desist Letters

If you decide to move forward, your patent attorney will start by sending the infringer a cease and desist letter. The letter will notify the infringer about your patent and then suggest they license the technology for a suggested royalty. The letter will conclude with a “final date for response,” after which you promise to sue.

Beware of Patent Misuse

It’s important to know you may not collect royalties before your patent issues. You also cannot collect royalties if your patented technology is not actually used in your competitor’s product.

A significant number of states have already passed laws preventing “bad faith” settlement attempts, condemning them as unfair and deceptive business practices. These laws are designed to stop non practicing entities (NPEs), or trolls, from collecting settlements from companies within the state. Lastly, in your settlement agreement, you may not prohibit your competitor from selling products not covered by your patent, as such clauses hurt competition.

Damages for Infringement

Upon a finding of patent infringement, the court can award you money damages for:

Lost Profits: This includes damages for collateral sales, price erosion, and accelerated market entry (i.e. what the infringer gained by cheating their way into the market).
Reasonable Royalty: The typical royalty is the price the infringing party would have been willing to pay to be able to make and sell the patented article in the market.

Other Settlement Factors – Tricks of the Trade

Your infringers have defenses that lessen their desire to sign a licensing agreement. They may be able to change their infringing process or product, and so “design around” your patent. Likewise, your defendant may know of prior art that could invalidate your patent at the Patent Trial and Appeal Board (PATB).

Choose a Registered Patent Attorney

As you can see, patent litigation is a delicate minefield. So if you are an inventor, a patentee or an accused-infringer, it’s in your best interests to find a licensed patent attorney for guidance.

PATENTS FOR HEALTH CARE DEVICES

The Copyright Registration Process

If you’ve authored a literary or visual work, a sound recording, a motion picture or a screenplay, you most likely want to Register your work with the United States Copyright Office.

Fixed works in a tangible medium of expression (i.e. in physical form),
Original works (not raw copies of another author’s work),
Works created, at least in part, by the author (i.e. pages ripped from your local phone book don’t count),
Derivative works and compilations, although these works present special challenges, and so should be Registered with the help of an intellectual property attorney.

Copyright does not protect ideas, but rather the expression of ideas. For example, you can’t copyright the idea of a man who time-travels into the past to save humanity in the future. You can, however, copyright the dialogue in your script entitled “The Terminator.”

Benefits of Registration

A work or art or literature is technically “copyrighted” by an author the moment they paint, write, sing, compose, play, or program it. However, only Registration with the U.S. Copyright Office gives certain legal rights and privileges that can be exercised in federal court:

The right to bring a copyright infringement suit in federal court,
The right to notify S. Customs for protection against illegal importation of unlicensed copies, and
Statutory damages and attorneys fees upon finding of infringement.

The only caveat to federal protection is that you must Register within 3 months of publishing your work.

In contrast, mere “registration” with various guilds, or sending your work to yourself through the mail, still forces the writer to prove damages to a jury and to prove the authenticity of their work.

The Process

If you want to protect and sell your intellectual property, you are best off Registering your work through an Entertainment Attorney, who can also negotiate licensing agreements for royalties.

If you are doing the Registration yourself, goto www.copyright.gov. You may upload your work to the United States Copyright Office electronically via the eCO system for under $100 per work if it is:

An unpublished work,
A work published only electronically.

The eCO system will prompt you to:

Complete an application to Register a new Claim,
Pay the necessary fee,
Submit, or upload, your “deposit,” or artistic work.

If your work was published, for example on the internet, and you need to memorialize its original publication form, then you can still use the www.copyright.gov site to do the Application. You will then send your work to the Copyright Office by mail.

The process is almost the same as electronically filing an uploaded work. The difference is, at the end of the eCO process, the eCO system will send you a Shipping Slip link. Print and use one shipping slip per work to submit your deposit to the Copyright Office.

For additional questions, you may contact the U.S. Copyright Office at the Library of Congress in Washington D.C.

Whether you’ve built the better mouse trap or you’re convinced your idea for an app would make millions, you may be asking “should I get a patent?” Like lawyers always say, “it depends.”

There are a number of factors to consider when you’re deciding whether or not to patent your innovation. Read on to learn more about each.

PATENT ELIGIBLE SUBJECT MATTER:
REPORT ON VIEWS AND RECOMMENDATIONS FROM THE PUBLIC
United States Patent and Trademark Office
July 2017

1. The Supreme Court’s Bilski, Mayo, Myriad, and Alice Decisions

Over the past seven years, the Supreme Court has issued a series of decisions— Bilski, Mayo, Myriad, and Alice——that have significantly impacted patent eligibility law and continues to generate substantial public debate.

Bilski, decided in 2010, involved a business method for hedging risk. In analyzing patent eligibility, the Supreme Court recognized that § 101 specifies four independent categories of inventions or discoveries that are eligible for patent protection (processes, machines, manufactures, and compositions of matter), but judicia judiciall precedent provides three specific exceptions to patent eligibility for laws of nature, physical phenomena, and abstract ideas. The Court rejected the view of the U.S. Court of Appeals for the Federal Circuit that the so-called so “machine or transformation test” is the exclusive test for assessing patent eligibility of a process. Under that test, a process claim is patent eligible provided it is (1) tied to a particular machine or apparatus, or (2) transforms nsforms a particular article into a different state or thing. The Court explained that although the machine machine-or-transformation transformation test “is a useful and important clue,” it is “not the sole test for deciding whether an invention is a patent patent-eligible eligible ‘process.’” The Court held that the claims at issue were invalid because they were directed to the unpatentable abstract idea of hedging risk in the energy market and added only token postsolution components, namely, use of well-known random analysis techniques to establish inputs. The Court observed that hedging is a long prevalent fundamental economic practice, and that allowing the patent claims “would pre-empt use of [risk hedging] in all fields” and “effectively grant a monopoly over an abstract idea.” The Court, however, left open the possibility that at least some business methods are patent eligible.

Following Bilski, the Supreme Court in Mayo addressed a method for optimizing drug dosages for treatment of autoimmune diseases in humans. The inventors discovered the relationship between the concentration of a metabolite in the blood following administration of the drug and the likelihood that the administered dosage would be ineffective or produce harmful side effects. The inventors obtained a patent claiming a method of determining whether a given dosage level is too low or too high based on the metabolite level. The Court held the claims to be patent ineligible. In analyzing the claims, the Court introduced a two-step framework for distinguishing patent ineligible concepts from patent eligible applications of those concepts. The first step is to consider whether the claims are directed to a judicially recognized exception to patentability, i.e., abstract ideas, laws of nature, or natural phenomena. If so, then the second question is “whether the claims do significantly more than simply describe these natural relations,” i.e., whether additional elements considered separately or as an ordered combination “transform the nature of the claim” into “a patent-eligible application” of the judicial exception. Applying the first step of this framework to the claims at issue, the Court found that the claims were directed to a law of nature: the relationship between the concentration of a particular metabolite in the blood and the likelihood that a dosage of a drug will be ineffective or harmful. Assessing the second step, the Court determined that the claims did not do “significantly more” than describe this natural relationship, i.e., the additional elements considered separately and as an ordered combination did not “transform the nature of the claim” into “a patent-eligible application” of the judicial exception.

At issue in Myriad was the patent eligibility of claims to isolated DNA (genes) associated with an increased risk of breast cancer, and synthetic DNA created from RNA known as complementary DNA (cDNA). The Supreme Court held that the isolated genes “fell squarely within the law of nature exception.” The Court explained that discovering the location of the genes does not render the genes patent eligible, nor does the act of separating them from their surrounding genetic material. While acknowledging that claims to a product “with markedly different characteristics from any found in nature” may be patent eligible, the Court explained that Myriad’s claims to isolated genes lacked such characteristics because they do not rely on any chemical changes resulting from isolation, and are not even expressed in terms of chemical composition. The Court did, however, rule that the claimed cDNAs were patent eligible because they differed from naturally occurring DNA by the absence of intron regions (i.e., non-coding nucleotide sequences).

Finally, in Alice, the Court reaffirmed the Mayo two-step framework and applied it to claims reciting a computer-implemented process, computer system, and computer readable medium for mitigating settlement risk. Under step one of the framework, the Court concluded that the claims were directed to the abstract idea of intermediated settlement. In assessing step two, the Court considered whether the claim elements, individually or as an ordered combination, “‘transform the nature of the claim’ into a patent-eligible application.” The Court referred to the second step as “a search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Looking at the claims at issue, the Court concluded that mere generic computer implementation does not transform the abstract idea into a patent-eligible invention. Thus, the court held the process claims, as well as the claims to the computer system and computer-readable medium, to be patent ineligible.

a. Computer-Related Technologies

In a large majority of cases pertaining to computer-related inventions, many of which involve business methods, the Federal Circuit has applied the framework to find claims to be ineligible. In several cases, however, the Federal Circuit has held claims involving computer technology to be patent eligible. As discussed further below, often eligibility turns on the presence of a technological solution to a technological problem in the claimed invention.

First, shortly after Bilski and prior to Mayo and Alice, the Federal Circuit considered the eligibility of patents directed to a method for rendering half-tone images of a digital image. The court noted that Bilski “refocused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract.” The court found “nothing abstract” in the claimed processes “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Instead, the court found that “[t]he invention presents functional and palpable applications in the field of computer technology.” While acknowledging that algorithms and formulas play a “significant part” in the claimed methods, the court found that they did “not bring th[e] invention even close to abstractness.” Accordingly, the court found the claims to be patent eligible.

Following the establishment of the two-step test in Mayo/Alice, the Federal Circuit applied that framework in DDR Holdings. At issue was a system for generating a composite webpage by combining certain elements of a “host” website with content of a third-party merchant. Specifically, the claimed system provided that when a user clicks on an advertisement for a third-party product displayed on a host website, the user is directed to a hybrid web page that combines the “look and feel” of the host website and product information from the third-party website. Beginning with step one of the two- step analysis, the court found that the claims did not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Instead, the court found that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court further observed that “the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same.” Thus, the court concluded that the claimed system was patent eligible.

Similarly, in Enfish, the Federal Circuit determined that claims to a data storage and retrieval system for a computer memory are not directed to an abstract idea. The system at issue incorporated a self-referential logical model, which allowed faster searching and more effective storage of data. As an initial matter, the court declined to “read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Analyzing the claimed invention under the first step of the Alice inquiry, the court found that the claims “are not directed to an abstract idea within the meaning of Alice,” but rather “to a specific improvement to the way computers operate, embodied in the selfreferential table.” The court distinguished from situations in which “general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation,” finding instead that “the claims are directed to a specific implementation of a solution to a problem in the software arts.” Because the claims were not directed to an abstract idea under step one, the court did not proceed to step two of the analysis and concluded that the claims were patent-eligible.

In the same year as Enfish, the Federal Circuit issued three more decisions finding computer-based inventions to be patent eligible under § 101. In Bascom, the court considered the patent eligibility of a system for filtering Internet content. Under step one, the court found the claims to be directed to an abstract idea because “filtering content is . . . a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” Thus, unlike in Enfish, the court proceeded to step two of Alice. While agreeing with the district court that “the limitations of the claims, taken individually, recite [a] generic computer, network and Internet components,” the court found that “the ordered combination of limitations” recites something more—“the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” The court further noted that the claims do not “preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.” Therefore, the court concluded that “the claims pass step two of Alice’s two-part framework.”

Shortly thereafter, the Federal Circuit determined that a method for automatically animating lip synchronization and facial expression of 3D characters was patent eligible subject matter. The court concluded that the claimed invention was not drawn to an abstract idea, explaining that “[w]hether at step one or step two of the Alice test . . . a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The court viewed the claimed invention to be an improvement that “allow[s] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Thus, according to the court, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” The court further observed that the claim “does not preempt approaches that use rules of a different structure or different techniques.”

Finally, in November 2016, the court issued its decision in Amdocs, determining that a computer readable medium and method for collecting and processing network accounting records over a network is patent eligible. The court first observed that prior decisions had found facially-similar claims to be eligible either under step one or step two. The court then explained that even if the claimed invention “is directed to an ineligible abstract idea under step one, [it] is eligible under step two because it contains a sufficient ‘inventive concept’” by “require[ing] ‘computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.’” In other words, in the court’s view, the claims “recite[] a series of limitations that, when considered individually and as an ordered combination, provide an inventive concept sufficient to confer eligibility.” The court further explained that the claimed invention “is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.”

Since the roundtable, the Federal Circuit has continued to issue decisions interpreting the Supreme Court’s recent jurisprudence.

Apple v. Samsung

In 2012, a jury in the Northern District of California returned a verdict of design patent
infringement in the much publicized Apple v. Samsung.

Apple asserted a number of design patents, including one directed to the face of a smartphone. The jury was instructed to use the modified
ordinary observer test and told that “[w]hen the claimed design is visually close to prior art designs,
small differences between the accused design and the claimed design may be important in
analyzing whether the overall appearances of accused and claimed designs are substantially the
same.”

While there is no written reasoning to analyze from the jury’s verdict, a comparison of the prior
art, claimed design, and one of the accused Samsung products offers some insight:

Prior Art Park B. Smith’s Claimed Design Samsung’s Smartphone
Verdict: US design patents only cover what is shown as solid lines. Dotted lines don’t count. The
left image is from Apple’s US design patent D593087. The right image is of a Samsung Galaxy S
4G. The Samsung image is from the court records in Apple v Samsung. The Samsung phone
infringed the Apple patent even though the backs were different because the Apple patent
showed the back as a dotted line and was not claimed.

Takeaway

Following Egyptian Goddess, “the ability to enforce design patents has been enhanced.” “Design
patentees undoubtedly received a significant boost,” and will have a “de facto increase in scope of
protection.” The elimination of the point of novelty test “increases the value of design patents.”

Design Patent Drawing Requirements – Link to USPTO Website and Examples

IS MY COMPUTER-RELATED TECHNOLOGY PATENT ELIGIBLE SUBJECT MATTER

TEST FOR DESIGN PATENT INFRINGEMENT

The Trademark Application Process

Applying for a trademark is straightforward, but not without pitfalls. Almost 75% of all Trademark Applications are refused at least once by the USPTO before they are ultimately abandoned or allowed and entered in the USPTO General Registry of Trademarks.

The USPTO Trademark Electronic Application System, “TEAS,” is easy to access, but difficult to navigate. Unfortunately, TEAS will let you submit an insufficient application, and it does not typically issue refunds. This article will give you an overview of the trademark application process and help you avoid common mistakes, but it’s also important to enlist the help of a skilled trademark attorney..

Items You Will Need to Apply

Before you meet with a trademark attorney, you should have the following materials handy:

Your business name, and whether you want your company to be the owner of the mark
The date you began using your mark in interstate commerce
The date you began using your mark anywhere (for example, with your friends or your with your graphic artist)
A list of all the goods or services you sell with the mark
A drawing of the mark, transmittable in electronic form
At least one “sample in commerce”

Trademark Search and Opinion

Your trademark attorney will begin with a trademark search on the USPTO Trademark Electronic Search System (“TESS”). Your attorney will then write a trademark search opinion, indicating whether any similar registered “live” marks might present consumers with a “likelihood of confusion.” If the likelihood of confusion is low, either because your mark is unique or because similar living marks are in unmistakably different industries, then you should move forward.

Intent to Use Applications

The application “basis” simply means whether you are currently using the mark, or whether you intend to use the mark in commerce. “Intent to Use” applications are for companies that want to hold their place for the word or logo while they prepare to sell the associated product. “Intent to Use” applications must be followed by a “statement of use” within six months of the USPTO’s notice of allowance or the application will go abandoned.

The International Classification

The TEAS system will then ask you to identify your mark’s international class from a list of about 50 different types of goods and services accepted by the World Intellectual Property Organization. You should be able to find your product or service listed in the USPTO’s Acceptable Identification of Goods and Services Manual.

Your Specimen in Interstate Commerce

You must submit at least one specimen of your mark as it is used in the commercial marketplace (e.g., on your product packaging or website). A specimen is generally what consumers actually see when they are trying to purchase your goods or services.

Advertising materials are not acceptable as a specimen, nor are materials used to carry out your daily business, such as invoices or packing slips. The USPTO typically accepts the following specimens:

A time-stamped, contextual photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
Product packaging showing the mark as sold in commerce (e.g., detergent soap packaging)
Signage used in a product display at a store (e.g., a time-stamped photograph of a window display)
A webpage showing the mark affixed to a product , and also showing purchasing information (e.g. a shopping cart “click to purchase” page).

Tip Regarding Word vs. Design Marks

When applying for a trademark, you must decide if you want to register a simple “word mark” or if you want to register your design, or logo. Since the application fee is the same for a single mark regardless of whether you pick a logo, a simple word phrase, or a combination thereof, you get the most value by registering a “composite” mark, encompassing your words and your logo.

See Your Local Trademark Attorney

Your business name and logo will forever be associated with your product and the goodwill of your company. Searching for similar marks, weighing your options, and preparing and filing a proper trademark application should be handled by a professional trademark attorney.

Choosing Trademarkable Names

Avoid “Taken” or “Merely-Descriptive” Names

Prospective trademarks fall into three categories: arbitrary, fanciful (novel), suggestive (salvageable), and [merely] descriptive/generic (deficient).

Arbitrary/fanciful names are good, like Amazon^® for an online internet book seller, or Apple^® for a computer company. These names are creative, intentionally peculiar for the product they sell.

The names are sufficiently unique to prevent a USPTO Trademark Examiner to suggest “likelihood of confusion.” These novel word marks were quickly rewarded with a ® Trademark on the USPTO General Registry.

Conversely, “merely-descriptive” marks comprise words that are not inherently distinctive. These marks blandly describe their industry, trying to distinguish themselves by adding irrelevant qualifying words like ‘best’ or ‘precision’ or “inc/corp/assc/ltd.” The USPTO TMEP expressly notes that these “qualifiers” do not help distinguish a mark for the American consumer (TMEP §807.14).

Nonetheless, these antiseptic ‘merely-descriptive’ marks may still receive full USPTO registration on the Principal Registry by eventually acquiring a “secondary meaning,” or “acquired distinctiveness” over time (infra).

However, applicants who successfully secure ® Registration for their merely-descriptive marks may face future challenges to their validity or to their exclusive use.

PHRASES & SLOGANS

If a proposed trademark consists of a phrase that is entirely generic, descriptive or merely informational, the phrase will not be considered a “trademark” and will be denied registrability by the USPTO.

“The Best Hamburgers Anywhere” will be denied a Trademark in Staple Foods Class 30.

Conversely, “Just Do It” is more than informational, a phrase sufficient for a Trademark in Sporting Goods Class 28.

Rules to Successfully Trademark a Phrase

The Trademarked Phrase cannot already be registered by another applicant for a similar product or service;
The Trademarked Phrase cannot simply describe the nature of the product or service;
The Trademarked Phrase must actually be used in conjunction with the sale of a product or service.

ACRONYMS

Consumers must not be able to recognize the acronym as synonymous with a particular product (one can’t monopolize a phrase the whole industry needs). USPTO Examiners have determined that acronyms, abbreviations and initials must have a meaning that is distinct from the generic descriptive terms they represent.

When the above threshold is met, the acronym, abbreviation or initials will be identifiable to the trademark’s source, therefore eligible for trademark protection.

The Trademark Manual of Examining Procedure’s section concerning acronym trademarks,

§1209.03(h), states:

[a] mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with [merely] descriptive wording if (paraphrasing) “it’s merely descriptive of the business.”

So, in order for trademark protection to be extended to include abbreviations, acronyms, and initials, the trademark applicant must prove the letters hold a distinct meaning separate and apart from the underlying words it represents.

*Note: as with any basic word mark, factors like continuous use, substantial sales and advertising may corroborate a claim to trademark protection of an acronym, abbreviation or initials. A mark can acquire distinctiveness within its market through long-term presence, advertising, and sales when its use is largely exclusive to a particular product or service from the brand holder (not a
“known” acronym used throughout the industry for functional reasons).

Descriptive marks can acquire distinctiveness and achieve protection if they come to represent not simply a description of a given good or service, but a single source of that good or service. This transformation is known as “acquired distinctiveness” or [loosely] “secondary meaning.” As long as consumers identify the mark with a single source (the brand seeking Registration), a descriptive mark can be found to have acquired secondary meaning.

Likelihood of Confusion

The USPTO will ding many applications under the guise that the mark is “is likely to cause confusion, or to cause mistake, or to deceive [the consumer].” The Lanham Act does not, however, define “confusion,” and neither will your rejecting-Examiner.

Courts conduct a subjective factual inquiry to determine the level of confusion caused by one mark’s effect upon another, or upon the American consumer. To accomplish this, courts employ the eight Polaroid factors:

The degree of resemblance between the conflicting designations;
The similarity of the marketing methods and channels of distribution;
The characteristics of the prospective purchasers and the degree of care they exercise;
The degree of distinctiveness of the senior user’s mark;
Where the goods or services are not competitive, the likelihood that prospective buyers would expect the senior user to expand into the field of the junior user;
Where the goods or services are sold in different territories, the extent to which the senior user’s designation is known in the junior user’s territory;
The intent of the junior user; and
Evidence of actual confusion.

These factors will be applied by a Judge and Jury, whose analysis fortunately comprises a “real world inquiry’ as to whether American consumers are genuinely confused. You will likely never see a Judge or Jury, however, and so your mark’s likelihood of confusion will be determined by your Examiner’s best attempt to find any similar mark in any similar industry.

USPTO Trademark Examiners may mechanically apply the “likelihood of confusion” analysis to reject a proposed mark in favor of a preexisting Registered mark even when no logical, legitimate “likelihood of confusion” exists. For this reason, the trademark applicant is advised to choose a genuinely “counterintuitive” creative name, and to then do a USPTO TESS Trademark Search to ensure the name is absolutely free of already-registered competition [in any permutation derivation or spelling alteration], and then to timely-respond to all USPTO Office Actions throughout trademark prosecution.

Trouble Trademarking Federally?

(FIGHTING A ‘LIKELIHOOD OF CONFUSION’ TRADEMARK REFUSAL)

In arguing against the toughest kind of Trademark Refusal, a §2(d) Rejection for “Likelihood of Confusion” against an already-Registered^® trademark, you must prepare for an evidentiary battle, not a common sense one.

Trademarks grant a word-monopoly that lives forever. The USPTO does not want to dilute this power, so they demand true novelty from new Applicants for ^® Registration.

Neither common sense nor case-law will win the day. Upon reading the rejection, most clients shout “we’re totally different from these guys! Our name is spelled differently, and we’re selling different products!”

In the real world, you’re right; in USPTO-Examination, you’re wrong and you’ll stay wrong.

If you appeal with case-law, the TTAB (USPTO’s appellate arm) can always find another case to top your case. This game is subjective, and the USPTO customarily favors the party with the previous ^® registration.

Your lawyer, if unscrupulous, will love this battle, billing hours based on your naïve belief there’s a sentient fact-finder on the other end. There’s no such fair-judge available in this battle until you get to the Federal Circuit, and you probably won’t want to fund four attorney “ROA’s” (responses to USPTO office actions) to get there.

YOUR OPTIONS

A. Fix your brand to accentuate a novel aspect of your mark/logo, one that’s already highlighted in your advertising materials and products but may have been overlooked. Carefully look through to product names, service names, line names, feature names and logos that are already littered all over your website, your packaging, and your advertising materials. You’d be amazed to find what your brand really is! Gradually, this novel name-mark will become your brand. Apply again with this new mark. The evolution may hurt, but it’s better than getting big only to get sued or copied.

B. If you’re stuck with your mark “as is,” and you must fight for it, the key is to PROVE the public is not confused and that no consumer could possibly be confused. You’ll need evidence. Online Reviews are your best bet, reviews that repeatedly mention your brand name, your exact product, and your Mark as a memorable aspect of the product.

C. Commission your i.p. lawyer to try again with your Examiner, this time distinguishing your mark from the Registrant by using your customer-based evidence (your online presence, your customer reviews and your Specimens in Commerce) to prove how different your product/service/industry is from the Registrant. You must leave your Examiner no articulable choice but to agree your Mark is NOT likely to cause confusion.

D. Watch the Registrant’s mark for abandonment (they may not pay the reissue fee by the 6-year point), leaving you/your mark as the last man standing. Delay your ROA (response to USPTO Office Action) until your competition goes abandoned. You may even ask the Examiner to Suspend the Action until your competition goes abandoned.

E. Obtain a Consent Agreement by writing your competition with a proposal to Agree to Coexist. This technique rarely works so you may want to abandon your current-failed application for now, stay under the radar, and wait until the Registrant disappears or strays rather than give a Registrant notice of your existence.

Factors Comprising the Rejection and How to Overcome Them

The degree of similarity between the marks including visual appearance, sound, connotation, commercial impression, and meaning; as an applicant you must show these elements are totally different within all related industries to the applicant’s industry to show novelty.

Relatedness of the goods or services (as described in the trademark application); unfortunately, even a “related” International Class is sufficient for the USPTO to reject. Exhibits can beat this rejection if products/services are shown to be totally unrelated, unfortunately the USPTO Examiners seldom agree with this common-sense argument.

Similarities in established trade channels; as an applicant you must show them to be totally different. Do this with the evidence, not with argument. Show the Examiner the sophistication of the consumers using consumer reviews; the fame of the trademark using amount of sales, amount spent on advertising, length of use of the mark, etc; the number and nature of similar marks in use in commerce on similar goods or in connection with the similar services and any evidence of actual confusion or lack thereof.

The Examiner speculates there might be “likelihood of confusion” on the slightest whim based on these factors, and only hard evidence can refute.

1. Evidence of concurrent use without evidence of actual confusion.

2. Whether the trademark is used on a variety of goods or only used on a single product (family of marks or house mark); this helps hone/focus your brand. Less is more here.

3. The market interface between the applicant and the owner of the prior mark.

4. The extent to which applicant has a right to exclude others from use of its mark; Statutory; involves “acquired distinctiveness” based on another form of ® lasting 5 years or more, which new Applicants rarely have.

5. The extent of potential confusion, minor or substantial. This “potential confusion” is unfortunately presumed.

6. Any other established fact probative of the trademark’s use in commerce in a fashion that conclusively shows no confusion to any consumers.