Randall Erickson of the Erickson Law Group will teach a three credit-hour Intellectual Property Law Course at the College of DuPage in the Spring 2009 term. The course will provide an overview of intellectual property law. It introduces students to concepts of ownership of intellectual property and includes coverage of patents, copyrights, trademarks and trade secrets, and how to prepare applications and documents to protect these rights.
Eric Waltmire’s Article on Preserving Patent Rights is Now Available Online
Eric Waltmire’s recently published “The Preservation Three Step: What Every Lawyer Should Know to Protect a Client’s Potentially Patentable Assets” in the DuPage County Bar Association’s October 2008 edition of its legal journal, The Brief. The article is now available here: http://www.dcbabrief.org/vol211008art4.html.
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The Preservation Three Step: What Every Lawyer Should Know to Protect a Client’s Potentially Patentable Assets
“For an idea that does not at first seem insane, there is no hope.”
—Albert Einstein
by Eric R. Waltmire
The Sinking Realization.
How many times have you said or heard someone say, “I thought of that before?” when seeing a product or service for the first time? Many individuals and businesses have lamented in the same way. Follow the three steps provided in this article to ensure your clients gain from their creativity rather than lamenting at lost opportunities.
Many of your clients have potentially patentable ideas, processes, or devices. It is important for you to identify their potentially patentable assets. It is also important to know what steps your clients should take to protect their right to seek a patent on such assets before the client makes a final determination whether those assets should be patented. This article provides (1) an overview of what types of ideas, processes, and devices are patentable and (2) the steps your client should take to preserve the right to patent a particular invention before the client makes a final determination on whether to, in fact, patent the invention.
Innovation Deserves Protection. Bill English, an employee of Xerox’s Palo Alto Research Center (PARC), invented the first computer ball mouse in the 1970s.1 Not only was the mouse invented at PARC, but scientists there developed “object-oriented programming, networked com-puters, pop-up menus, user-friendly word processing, the graphical user interface . . . and icons.”2 Most people do not think of Xerox as a computer company, but rather a copier company. This perception is due to Xerox’s decision not to seek a patent on the mouse and related computer technology. We think of the mouse as associated with Microsoft Windows, PCs, or Apple’s Macintosh user interface. This is because Steve Jobs, the CEO of Apple, saw a prototype of the mouse and the graphical user interface while visiting a Xerox facility.3 Meanwhile, the researchers at PARC could not convince the executives at Xerox that their innovation would be commercially successful, despite many demonstrations. Xerox failed to seek patent protection and allowed the technology to languish. They were too focused on their copier business. Jobs later hired some of those Palo Alto researchers away from Xerox to help build personal computers with many of the features he first saw at Xerox, including the computer mouse.
Steve jobs said, “Basically they [Xerox executives] were copier heads that just had no clue about a computer or what it could do,”4 Jobs continued, “so they just grabbed defeat from the greatest victory in the computer industry . . . Xerox could have owned the entire computer industry today.”5 Xerox didn’t fail to innovate—their scientists at PARC were one of the most innovative groups—but they failed to adequately protect and commercialize their innovation. Following the steps in this article will help your clients avoid grabbing defeat from the jaws of their greatest victory.
What is a Patent? Before discussing what things are patentable, it is important to know what a patent is. A patent is a grant from a government that provides an inventor the right to exclude others from making, selling, using, importing, or offering an invention for sale for a fixed period of time. 6 For all utility applications filed on or after June 8, 1995 in the United States, the patent term extends 20 years from the earliest effective patent application filing date.7 In order to maintain utility patent rights for the entire term, the patentee must pay maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the date the patent issues.
What’s Patentable? The scope of the patentable subject matter is so broad that the Supreme Court stated that anything under the sun that is made by humans, except laws of nature, natural phenomena, abstract ideas, and humans are patentable.8 This article focuses on utility patents. However, there are two other types of patents, design patents and plant patents. A design patent covers new, original, and ornamental design for an article of manufacture. Plant patents are for one who invents or discovers and asexually reproduces any distinct and new variety of plant. Section 101 provides five categories of patentable subject matter relevant to utility patents: (1) processes (methods), (2) machines, (3) articles of manufacture, (4) compositions, (5) a new use of one of the first four.9 An applicant need not designate a category when filing a patent application as long as the invention falls within one of the categories.
Legal Requirements. This article is designed to provide you with the steps to preserve patent rights before a final determination on whether to seek a patent is made. An in-depth analysis of each patentability requirement is outside the scope of this article. However, I will briefly touch on the basic requirements.
There are at least four legal requirements for an invention to be patentable. The invention must be novel, non-obvious, useful, and classifiable within a statutory class of patentable inventions. First, on the novelty requirement, the invention must be new compared with prior art. Prior art includes (1) patents or printed publication anywhere in the world, or (2) public knowledge, public use, or sale of the invention in the United States. Consider whether the invention is different in any way from the prior art.10 Second, the invention must be “non-obvious” in view of the prior art when viewed from the standpoint of one skilled in the specific technology involved.11 The legal concept of “obviousness” in patent law is a highly litigated legal concept which may not be the same as a non-patent lawyer normally understands the term. Consider whether the invention is sufficiently different from the prior art when considered by a person having ordinary skill in the area of technology related to the invention. It is very difficult to predict what the United States Patent and Trademark Office (USPTO) will consider obvious due to the multifactor, fact intensive, inquiry required in an obviousness analysis.12 Even very small improvements may be patentable. You should consult with a patent attorney before determining that an invention is obvious. The third factor is whether the invention has utility.13 This is an easy requirement. Ask if the invention is useful for something other than landfill. If it is, then it has utility. The last factor is whether the invention falls within a statutory class, as mentioned above: a process (method), a machine, an article of manufacture, composition, or new use of any of the previous four.
The Preservation Three Step. If you think your client might have an idea that is patentable, you should advise the client to (1) keep the invention confidential, (2) document the invention and the events surrounding the invention’s conception and testing, and (3) diligently pursue the invention. You may find it useful to provide this information to all of your business clients, not just the ones that obviously engage in product or service development. Innovation is not the exclusive domain of any one type of business, but may originate from any person. Your client should take these steps before the client makes a final decision whether to apply for a patent.
1. Keep it Confidential. The inventor should avoid what I describe as “disclosure activities” before a patent application is filed. Disclosure activities include (1) disclosing the invention publicly,14 (2) disclosing the subject of the invention to a third party that is not under an obligation of confidentiality,15 (3) using the invention commercially or publically, even if the no one is aware of the public use,16 and (4) selling or offering the invention for sale.17 In some foreign countries, “publicly disclosing” can be as little as telling one person who is not under an express or implied agreement of confidentiality.
The reason to avoid disclosure activities is that these activities could forfeit an inventor’s right to obtain a patent under U.S. and foreign law. The U.S. has a one-year grace period that provides a patent application must be filed within one year after one undertakes a disclosure activity with respect to the subject matter of the invention.18 However, most foreign countries require “absolute novelty” and do not provide this one year grace period. If there is even a slight chance that patent protection is needed in foreign markets, the inventor and those associated with the invention must avoid disclosure activities until an application is filed. In either case, the safest route is to maintain confidentiality until an application is filed in the U.S. Filing a patent application in the U.S. is generally not considered a disclosure activity that violates the absolute novelty requirement of foreign countries. One can normally file a foreign patent application within a certain amount of time after filing in the U.S.
There are exceptions that may avoid the consequences of disclosure activities—such as an exception allowing use of an invention for testing purposes—but the exceptions are nuanced and outside the scope of this article. However, a client should not be paralyzed by the paranoia that someone might steal the invention. An unexploited invention has only commercial potential—like the computer innovations at the Xerox PARC facility—and those who delay pursuing that invention may lose out to a diligent inventor, like Apple. An inventor may make select disclosures to individuals who are under an obligation of confidentiality. Moreover, taking steps to document the invention as described in the next section will further preserve the inventor’s rights.
2.Document the Invention. It is important for your clients to document the facts of the invention and the events surrounding the invention’s conception: (1) to combat possible future claims by others that they invented your client’s invention independently first, (2) to prove your client invented the invention before the date of a particular prior art reference (patent or printed publication), (3) to provide proof if your client’s invention is stolen, and (4) to provide proof if there is a dispute over inventorship between co-inventors.19 While documenting an invention is not required before filing a patent application, the following provides a best practice for firmly securing patent rights as of the date of conception of the invention.
Lab Notebook. The best way to record the conception and development of the invention is to use an inventor’s lab notebook. These notebooks are designed for inventors. They are sturdy, each page is numbered, and the pages are permanently bound. The lab notebooks usually have lines at the bottom of each page for signatures and dates of the inventors and the witnesses. Lab notebooks are available at Fisher Scientific (www. fishersci.com).20 Alternatively, a standard bound notebook with pages that can’t be temporarily removed—no loose-leaf binders—will work in place of a lab notebook. When using a standard bound notebook, number all the pages consecutively before making entries in the notebook.
Notebook Information. The notebook is a diary of the inventor’s technical work. The inventors name, address and date the notebook was started should be written on the front of the notebook. The following information should be included in an entry: (1) title of the invention, (2) purpose of the invention/what problem does the invention solve (3) description of the invention’s structure and function, (4) informal drawings and/or photos with components labeled and referenced in the description, (5) new features of the invention, (6) any other close existing approaches or inventions known to the inventor or client, (7) advantages of the invention over the previous inventions/developments, (8) description of any tests performed on the invention, (9) results of any building or testing of a prototype, (10) conclusions.21 Refer to the original entry by invention title and page number when recording subsequent entries. Entries should be primarily factual, with conclusions provided only when supported by facts.
Honestly Sign and Date Each Entry. Each entry should be signed and dated. The idea is not to be sneaky in an attempt to be perfect, but rather to establish an authentic record related to the invention. If the inventor made entries days before he or she signed them, then the inventor should include a statement to that effect, for example, “I wrote the above on June 10, 2008, but forgot to sign and date it until now.”22 If the inventor conceived or built the invention already and the entry was not made contemporaneously with conception or building, the inventor should state the honest full facts and date the entry as the date the entry is written and signed by the inventor. For example, “I thought of the above invention on December 24, 2007 while fixing the door at my Aunt Mary Herzog’s house, but I didn’t write any description of it until today when my attorney advised me of a good procedure for documenting inventions.”
Witnesses. Witnesses should regularly sign notebook entries. Choose witnesses that are impartial and not relatives or people that the inventor worked closely with on the invention.23 The witness must have the capability of understanding the invention. The witness is not required to understand the theory behind the invention, although such an understanding is a plus. The witness should read and understand the material that he or she is witnessing in the notebook. The witness should not be in poor health because the point of a witness is, in part, to testify later, if needed, as to the facts that he or she witnessed. The following should appear above the witnesses’ signature and date, “The following undersigned, have witnessed, and agree not to disclose the above confidential information.”24 Obtaining two witnesses is preferred because it makes the inventor’s case stronger. Moreover, the inventor’s patent attorney should not be a witness because a patent attorney may not represent an inventor and also be a witness for the inventor.
Invention Disclosure Document. An invention disclosure document may be used as a somewhat less preferred method of recording an invention. A lab notebook with regular honest and comprehensive entries is preferred because it presents stronger evidence of the facts surrounding the invention, conception, and development of the invention. The invention disclosure document is a separate blank sheet of paper that is headed by the inventor’s name and address.25 It contains the same information as is contained in an inventor notebook entry, and concludes with the signatures and dates from the inventor and witnesses.
3. Be Diligent. As mentioned above, many times inventors are so afraid someone might steal their invention that they refuse to talk to anyone about it, including a patent attorney. However, an inventor that sits on an invention may lose out to another inventor that is diligent. This is codified at 35 U.S.C. 102(g), which provides: “In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to the conception by the other.”
Let me explain that section. The reduction to practice (RTP) can be an actual or constructive. Actual RTP is where the inventor creates a working proto-type of the invention. Constructive RTP is where the inventor files a patent application on the invention. Section 102(g) provides when two people file a patent applications on the same invention the patent will be awarded to the inventor who was first to reduce the invention to practice, unless the other inventor conceived of the invention first and was diligent in reducing the invention to practice.
Although an inventor may “win” the patent race by documenting actual RTP of the invention, filing a patent application is the best protection. This is because the USPTO knows the date an application is filed. Therefore proving the filing date of an application is simple. However, proving the date of actual RTP is more involved, less certain, and more costly. Also, if a first-to-invent dispute arises, the opposing side—like in litigation—may dispute the documentation showing actual RTP. The law rewards inventors and companies who diligently pursue their invention and diligently seek patent protection.
Moreover, even when an inventor diligently pursues her invention, if she delays filing a patent application and her invention is disclosed in certain prior art more than one year before she files, she may lose her patent rights nonetheless. Therefore, being diligent includes diligently filing a patent application.
Conclusion. Every attorney should know how to preserve patent rights for a client’s potentially patentable innovation. To do so, advise your client to (1) keep the invention confidential, (2) document the invention and the events surrounding the invention’s conception and testing, and (3) diligently pursue the invention. Guiding your client on this straightforward dance will ensure your client is not a wallflower while competitors are busy on the innovation economy dance floor.n
1 Mouse 40 years old, and it still lets you push it around, Pittsburg Post-Gazette, January 05, 2008, available at, http://www.post-gazette.com/pg/08005/846863-371.stm.
2 Morgan W. McCall Jr., Taking a Lead on Innovation: Five common mistakes that hinder innovation and how to avoid them, Harvard Management Update, http://discussionleader.hbsp.com/hmu/2008/02/taking-the-lead-on-innovation-1.php; also published in Strategy & Innovation Newsletter, 2 Harvard Business Publishing 2, March/April 2004, available at http://harvardbusinessonline.hbsp. harvard.edu/b02/en/common/tem_detail.jhtml;jsessionid=AY2KSSMSD GPQOAKRGWDR5VQBKE0YIISW?id =S04030&referral=2341.
3 John Markoff, Xerox vs. Apple: Standard ‘Dashboard’ Is at Issue, New York Times, Dec. 20, 1989, available at http://query.nytimes.com/gst/fullpage.html?res=950DEFDC103BF 933A15751C1A96F948260&sec=&spon= &pagewanted=all; Alex Soojung-Kim Pang, Mighty Mouse, Stanford Magazine, Mar./Apr. 2002, available at http://www. stanfordalumni.org/news/magazine/2002/marapr/features/mouse.html.
4 Leander Kahney, Inside Steve’s Brain, 194 (Portfolio Hardcover 2008).
5 “Triumph of The Nerds,” Transcript of Television Program, available at http://www.pbs.org/nerds/part3.html.
6 35 U.S.C. § 154 (2008).
7 Id. Design Patents have a 14 year term beginning from the date the patent issues.
8 Diamond v. Diehr, 450 U.S. 175 (1981).
9 35 U.S.C. § 101 (2008).
10 35 U.S.C. § 102; Manual of Patent Examining Procedure (MPEP) §§ 2131-2138.06 (2008) available at http://www. uspto.gov/web/offices/pac/mpep/index.html (last accessed: 07/27/2008).
11 35 US.C. § 103.
12 MPEP § 2141.
13 Id. at § 2107.
14 Id. at § 2131(I).
15 Id.
16 Id. at § 2133.03(a).
17 Id. at § 2133.03(b).
18 35 U.S.C. § 102(b).
19 David Pressman, Patent It Yourself, 46-47 (13th ed., Nolo 2008). I read this book after some of my clients mentioned it. It provides a good overview of the patent process along with practical tips.
20 Id. at 49.
21 Id. at 59.
22 Id. at 49.
23 Id. at 53.
24 Id. at 55.
25 Id. at 54.
The Law Office of Randall T. Erickson, PC is now Erickson Law Group, PC
The Law Office of Randall T. Erickson is now Erickson Law Group, PC.
The Erickson Law Group, PC represents clients internationally, including Europe, Asia, and North America, and also throughout the United States. The Erickson Law Group, PC provides a broad range of legal services to protect our client’s intellectual property. We serve clients ranging in size from Fortune 50 companies to individual inventors. We provide individualized services in all areas of intellectual property law including patents, trademarks, copyrights, trade secrets, unfair competition, and licensing. Our attorneys have experience with a range of art subject areas including mechanical, biotechnology, life sciences, pharmaceuticals, compounds, medical devices, medical instruments, electrical, computer science, and internet technologies. We have the background to understand the subject matter of your intellectual property and the experience to advise you on the most effective legal strategies for securing and protecting your intellectual property rights.
Eric Waltmire Appointed as Chair of DuPage Bar IP Committee
DuPage County Bar Association President Thomas Else, appointed Eric Waltmire as the Chairman of the Intellectual Property Law & Practice Committee.
Eric plans to work with committee vice-chair, Sean McCumber, among others, to organize an intellectual property law seminar in the first quarter of 2009. “There is a sizable and growing group of intellectual property lawyers in DuPage County and this committee will facilitate discussion of and education on intellectual property law developments.” Eric said. “The committee will reach out to all members of the bar on issues of intellectual property as they pervade into other areas of law.”
Please contact Eric at eric@erickson-lawfirm if you would like be a member of the Intellectual Property Law & Practice Committee or if you would like to be kept informed on intellectual property developments from the committee.
Eric Waltmire Presents Trademark Seminar to DuPage Bar Committee
Eric R. Waltmire, attorney with the Law Office of Randall T. Erickson, presented a seminar on “What the Civil and Business Practitioner Needs to Know About Trademarks and Trademark Law” at the a joint meeting of the Business Committee and the Civil Law and Practice Committee of the DuPage County Bar Association.
The presentation was held on October 23, 2008 at 12:00 p.m., in the 3rd Floor, Attorney Resource Center, DuPage Judicial Center at 505 N. County Farm Rd.,
Wheaton, IL.
Eric’s portion of the seminar covered:
- What constitutes a strong mark?
- Trademark Searches
- When is my trademark application filing date critical?
- What’s the difference between registering a word mark and a logo mark?
- Should a Trademark ever be registered claiming a color?
- Internet Domain Names as Trademarks: Do I register my mark as “Mark” or “Mark.com”?
- I’m registered, now what?
A handout from the seminar is available here [PDF].
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Practical Advice on Trademarks
Joint meeting of the Business Committee and Civil Law and Practice Committee of the
DuPage County Bar Association
October 23, 2008
Summary
- What constitutes a strong mark?
- Trademark Searches
- When is my trademark application filing date critical?
- What’s the difference between registering a word mark and a logo mark?
- Should a Trademark ever be registered claiming a color?
- Internet Domain Names as Trademarks: Do I register my mark as “Mark” or “Mark.com”?
- I’m registered, now what?
What is a Trademark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
What makes a strong Mark?
A strong mark is one that has a greater level of distinctiveness in relation to the product or service. A mark must be distinctive rather than descriptive. Matter that merely describes the goods or services on or in connection with which it is used is not registrable on the Principal Register. TMEP § 1209 (2007). The reasons for not protecting merely descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. If Starbucks were able to register “coffee” as a trademark, Starbucks could stop anyone from using the term “coffee” when referring to coffee and thus the public would be without a word to describe coffee.
Continuum of Distinctiveness. The strength of a mark may be categorized along a continuum, ranging from marks that are highly distinctive (“Pepsi” for cola) to matter that is a generic name (“coffee” for coffee) for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990). The degree of distinctiveness of a mark corresponds to the degree of protection provided by Trademark law. The more distinctive a mark is the more protection provided by law.
At one end, marks highly distinctive when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. TMEP § 1209.01.
While a search is required before filing a trademark application, you should do a trademark search (1) to reveal if you are the first to use the mark for goods or services in the relevant channel of trade, and (2) save money during trademark prosecution by avoiding an application on a mark that is already registered. If you fail to do a search you may have to change your mark or pay damages to someone that registered a mark that is likely to cause consumer confusion with your proposed mark. The cost of changing your mark when it is a business name is substantial.
When is my trademark application filing date critical?
The person entitled to trademark protection is generally the first person or entity to use the mark in commerce, regardless of the registration date. (Cite) So usually trademark rights are not determined by a race to the Trademark Office. However, if your client is not currently using the mark in commerce, you may file an “intent to use” application. There the applicant claims a bona-fide intent to use the application in commerce within a specified period of time (6 months, which is extendable in six month increments not to exceed 36 months after notice of allowance).
Therefore the filing date is critical for an applicant who is not currently using the mark in commerce but has a bona-fide intent to do so. Under 15 U.S.C. §§1057(c) and 1141f(b), filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark in commerce, provided the application matures into a registration. TMEP § 201.02 (2007). “Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d) or §1141g.” Id.
Therefore, an applicant filing an intent to use application has superior rights to a third party who actually uses the same or similar mark in commerce after the filing date but before the applicant actually uses the mark in commerce, if the application matures into registration.
Moreover, it is advisable to file early, to allege the need to prove prior use in commerce against a registered mark in a cancelation proceeding at the PTO.
A word mark is one consisting of only characters. A design mark consists commonly of a graphic design or distinctive typefaces with a business or product name. The name can be considered as one mark while the combination of the graphic design may be viewed as a separate mark.
Which do you register? (1) Words only? (2) Graphic/Logo Only? (3) Combination of Words and Graphics/Logo?
- Words only, as long as the words are rather distinctive
- Combination of words and Graphics/Logo.
Trademark Classes: When and why does the choice of classes may have an impact on your rights?
Consider the InstraTech Company who both makes and sells machine parts and also provides consulting machine part design services. If InstraTech registers its mark in Class 7 (Machines and machine tools), it is protected against the same or similar marks used on machine parts. However the registration may not protect InstraTech in connection with its design consulting service. For the broadest protection InstraTech should also register its mark in service Class 42 (scientific and technological services and research and design relating thereto).
The classification is used more by the PTO than in the courts. Courts simply look to see if there’s a likelihood of confusion regardless of classification of the two marks. However, if InstraTech fails to register in class 42, the PTO may allow, rightly or wrongly, a third party to register a similar mark (Ex, InstroTech) in class 42 for machine design services.
Should a Trademark ever be registered claiming a color? Does a claim of color limit your rights?
I you register the logo in black and white and without claim to color, a third party cannot register or use a confusingly similar logo in any color (or no color) without infringing.
If you do claim color it depends on the fact of the case whether a similar logo without your claimed colors will infringe. A claim of color means that you consider the color to be an essential part of the mark.
The “Mobil” mark of the ExxonMobil Corporation is a good example of where a claim for color is appropriate. The Mobil sign has the “M_bil” characters in blue and the “o” in red. Mobil registered its mark as both a word (U.S. Reg. No. ) and a logo of “Mobil” claiming color (U.S. Reg. No. 1,015,027). This prevents other from using confusingly similar words like “Mabil” and also prevent confusingly similar use of colors in a word “Force” with the “F_rce” in blue and the “o” in red.
Source: http://www.bpmlegal.com/tmqa.html#7a.
The extent that a claim of color limits our rights depends on the strength (uniqueness) of the mark. If the mark is a rather simple X with a claim of color, then other marks with X using a difference color scheme may not infringe due to the commonality of “X.” However if your mark is very distinctive like the Starbucks® logo, then even a registration with a claim of color on that logo would be sufficiently strong to prevent others from using a similar logo with a different color scheme.
The best practice is to claim color only when color is essential to the mark.
Internet Domain Names as Trademarks: Do I register my mark as “Mark” or “Mark.com”?
“Because TLDs (Top Level Domains “.com”, “.net” etc.) generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable.” TMEP § 1209.03(m); see also In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records and for tracking the status of the records by means of the Internet).
However, “The Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD such as “.com” or “.net.”” Id.; In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM for “computerized on line retail services in the field of pre-engineered metal buildings and roofing systems” held highly descriptive, but not generic), citing In re Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at 1373. “In those rare instances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD, such as “.com,” “.net,” etc.”” Moreover, “In those unusual circumstances, the addition of the TLD can show Internet-related distinctiveness, intimating some “Internet feature” of the item.” In re Steelbuilding.com. Therefore generally it is advisable to leave the TLD out of trademark registration applications unless the circumstances indicate that the addition of the TLD would add distinctive characteristics to an otherwise undistinctive mark.
After Registration
After a mark is registered the owner my muse the ® symbol after the mark to indicate that it is registered with the U.S. Trademark Office.
Section 8 and section 15 declarations must be filed between the 5th year and the 6 year after registration. See TMEP §§ 1604, 1605 (2007). The Section 8 declaration officially advices the PTO that your mark is still in use and your registration should continue. The section 15 declaration provides that your mark has been in continuous use from the date of registration. This continuous use provided additional protection against potential challengers. Failure to file section 8 declaration is will result in the cancelation of your registration.
Eric Waltmire is Lead Articles Editor for IP Edition of DuPage Bar’s Brief
Eric Waltmire of the Law Office of Randall T. Erickson is the lead articles editor for the October 2008 edition of the DuPage County Bar Association’s legal journal, The Brief [link]. Eric compiled four intellectual property law articles to complete the intellectual property edition of The Brief.
The articles included in the IP edition are:
- “Designer” Jewelry vs. “Inspired-by” Jewelry: Intellectual Property Infringement and Unfair Competition Considerations by Daliah Saper
- Online Copyright Infringement Presents Some Special Issues by Evan D. Brown
- An Intellectual Property Primer by Vik Panchal and James Drake
- The Preservation Three Step: What Every Lawyer Should Know to Protect a Client’s Potentially Patentable Assets by Eric Waltmire
The edition is available at www.dcbabrief.org.
How to Pitch a VC
Venture capitalist David S. Rose’s, speaking at TED, talks about the 10 things you need to know when pitching a venture capitalist. His tips are relevant to anyone giving a power point presentation. See the presentation here or http://tinyurl.com/3noe89.
Trademarks: Alternative Courses to Registration on the Primary Register
When your proposed mark is merely discriptive you have at least two alternatives to registering the mark as a word mark on the Primary Register. Merely descriptive marks cannot be registered without proof of secondary meaning—i.e. proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce. Trademark Manual of Examining Procedure (TMEP) § 1212 (2008). A mark is considered merely descriptive if it “describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” Id. at § 1209.01(b).
Trademark a Logo
When you encounter a situation where your mark may be considered only descriptive, seeking registration of a logo containing the mark may be your best option. A word or character mark claims the use of the words or characters in any form. A design mark (logo) generally claims the words as specifically depicted with the accompanying design elements.
Registering a logo as a trademark grants you rights to the graphical presentation of the logo as a whole. However, you do not receive exclusive rights to the words used in the logo. Logos are not as strong because they only cover the particular logo. Yet they are easier to register. However, if the logo is changed, the owner will need to file another application to cover the new logo.
While registering the logo does not grant exclusive rights to the words used in the logo, the registration still has a deterrent effect. This effect occurs when another party or the Trademark Office searches the trademark database. The search returns results for word marks as well as the literal words and characters in logo (design) marks. Depending on the circumstances, the words or combination of characters in a logo mark may serve as basis for the Trademark Office to refuse registration to third parties attempting to register similar word marks or design (logo) marks that contain the words in your logo.
Registration on the Supplemental Register
Another approach is to place your word mark on the Supplemental Register until acquired distinctiveness or secondary meaning can be shown. The description below explains the difference between the Primary Register and the Supplemental Register. After a period of time on the Supplemental Register and with a showing of certain additional evidence, the applicant may apply to place the mark on the Primary Register.
A mark that is merely descriptive of the goods or services cannot be registered on the Principal Register a mark, absent a showing of acquired distinctiveness. TMEP § 1209.01 (2008). However, merely descriptive marks may be registered on the Supplemental Register. Id.
Primary Register. Registration on the Principle Register is preferred. Registration on the Principle Register acts as prima facie evidence of (1) the registrant’s ownership of the mark, (2) the validity of the mark and its registration, and (3) an exclusive right to use the mark in commerce under specified circumstances. Trademark registration also operates to provide constructive notice to all parties that the trademark is the exclusive property of the trademark owner. Primary registration provides the trademark holder nationwide protection. Last, registration provides the registrant with broader remedies when enforcing rights in federal court.
Supplemental Register. Registration on the Supplemental Register does not provide the benefits of the Principle Register. It does provide the following benefits: (1) the right to file an infringement action in federal court, (2) the Patent and Trademark Office may use it to deny registration of a later filed similar mark, and (3) the registrant can later apply to have the mark registered on the Principal Register. This later application for registration on the Principal Register may be allowed when the applicant demonstrates that the mark has acquired distinctiveness or “secondary meaning.”
Acquired distinctivenes. Acquired distinctiveness or “secondary meaning” requires proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce. This proof can include: affidavits, declarations, depositions or other appropriate evidence showing the duration, extent and nature of (1) the applicant’s use of a mark in commerce, (2) advertising expenditures in connection with such use, (3) letters or statements from the trade and/or public, or (4) other appropriate evidence tending to show that the mark distinguishes the goods or services. Also, proof of acquired distinctiveness may be supported by “A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for five years before the date when the claim of distinctiveness is made” TMEP § 1212.
If Trademark Office ultimately finds your mark is merely descriptive and refuses registration, we can register it on the Supplemental Register. Then later, after the mark has acquired distinctiveness, we can attempt registration on the Primary Register.
New Pilot Project: Pre-First Action Interview as of Right
The USPTO announced that it is launching a program to allow an Examiner interview before first action. Here’s the process. First the applicant requests a first-action interview. The examiner conducts a prior art search and provides the applicant a pre-interview communication. This is a condensed preview of objections or rejections proposed against the claims. Then, within 30 days, the applicant must either elect (1) not to have a first action interview with the Examiner, or (2) to schedule the interview and file a proposed amendment and/or remarks.
The pilot only applies to applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures.
In all other cases, MPEP 713.02 applies to allow pre-examination interviews at the descretion of the Examiner.
I/P Updates Reports GUANTANAMERA Misdiscriptive
“In Corporacion Habanos, S.A. v. Guantanamera Cigars Co., Opposition No. 91152248 (February 29, 2008), the U.S. Trademark trial and Appeal Board sustained an opposition to registration of that mark”GUANTANAMERA” for cigars on the ground that it is primarily geographically deceptively misdescriptive under Section 2(e)(3). . . ” [link]