Intellectual Property

Trademarks 101 PART 4: Avoiding Mistakes–Don’t Ignore Abandoned Applications or Cancelled Registrations

Posted by on Nov 1, 2013 in Intellectual Property

Here’s another mistake startups and entrepreneurs make when it comes to protecting their brand or image: Even if they’re trying to go through the trademark process and conduct searches, many startups and entrepreneurs mistakenly assume that they shouldn’t worry about applications that have been abandoned or trademarks that are the subject of cancelled registrations. The thing to remember is: Although a trademark registration is cancelled or an application is abandoned, there is still the possibility that the underlying trademark may be in use and/or that the owner of the underlying trademark may have common law rights in the mark. Ignoring those applications and registrations can be a huge mistake if the mark is in use or if the trademark has not been officially and legally abandoned (e.g. the use has stopped temporarily). There are many reasons why a trademark registration may be cancelled or an application abandoned which have nothing to do with whether the trademark is in use. For example, docket failures and failures to overcome USPTO office actions are reasons a trademark registration may be cancelled or an application abandoned. Therefore, if you’ve conducted a trademark search and you come across an abandoned application or cancelled registration for a mark that is similar to the mark you want to use and the mark is for a related good or service, you will probably want to conduct further investigations to determine whether the mark is still in use and, if the mark is no longer in use, to determine when the use stopped and whether the owner has plans to pick the use back up again. If you have questions concerning your brand, image or trademark search, please contact a trademark...

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Trademarks 101 PART 3: Avoiding Common Mistakes– Preliminary Searches

Posted by on Oct 21, 2013 in Intellectual Property

We’ve been discussing common mistakes small businesses and entrepreneurs make when dealing with their brand, mark or image. Last week we discussed that one common mistake is that people fail to properly conduct a trademark search. Trademark searches can either be preliminary trademark searches or they can be full trademark searches. Today we’ll discuss preliminary trademark searches. PRELIMINARY TRADEMARK SEARCHES Preliminary trademark searches generally involve searches conducted for free on the internet and the U.S. Patent and Trademark Office (USPTO) database (using the Trademark Electronic Search System (TESS)) to see if there are any direct conflicts. If one of these searches identifies a direct conflict, it either means that the potential mark is either unavailable or will only become available if additional acts are taken to obtain clearance (e.g. purchasing conflicting rights). Depending on time and budget constraints, taking such clearance actions may not be a realistic option–especially for a small company or entrepreneur. A USPTO search will typically pull up existing federal applications or registrations for marks that are identical to or applicable to products or services which are closely related or identical. While USPTO searches are useful as a preliminary search, they are not good enough to completely clear a proposed mark for full registration. Limitations on USPTO searches are: The USPTO database only includes federal trademark applications and registrations. The USPTO database does not include common law marks. A USPTO search may not reveal applications or registrations for marks that may be similar enough to cause consumer confusion although they are not identical, nor do they appear to have a direct conflict. Thus, if you have a brand, mark or image you would like to protect by obtaining a trademark, it is probably not a good idea to rely solely on a USPTO or general internet search unless: You intend to use your mark in a limited manner for a short period of time or Your mark is so descriptive and distinct that it would be extremely unlikely for a third-party to have conflicting rights that would be enforceable. If you are interested in learning more about how you can protect your brand, please consult a trademark...

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Trademarks 101: Avoiding Common Mistakes PART 2

Posted by on Oct 9, 2013 in Intellectual Property

In addition to consulting an attorney who specializes in trademark law, startup companies and entrepreneuers can avoid other common mistakes when it comes to safeguarding their brand or image by conducting a proper trademark search. While this also may seem like common sense, you’d be surprised at the number of entrepreneurs who build an entire business model and brand without so much as conducting a preliminary search, much less a full-fledged trademark search. Many trademark infringement claims could have been completely avoided if the company or entrepreneur had taken the time and made the small expenditure up front to conduct a trademark search not just before launching their business, but before finalizing their business model. If a proper search is conducted, it may help to surface any mark held by a third-party which could potentially be an infringement risk. If a proper search is conducted up front, the company or entrepreneur will have the time to choose a different name, brand or image or obtain permission to use that particular name, brand or image from the third party who owns it. A proper trademark search can also help the company or entrepreneur defend against claims that the alleged infringement was willful (which raises the severity of the infringement claim). In the converse–not conducting a proper trademark search can possibly be used as evidence that the company or entrepreneur acted willfully. Trademark searches can be preliminary or they can be full trademark searches, both of which we will discuss over the next couple of weeks. In the meantime, if you have any questions concerning how to protect your name, brand or image, please contact a trademark...

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Trademarks 101: Avoiding Common Mistakes

Posted by on Oct 4, 2013 in Intellectual Property, Practice Pointers

Many entrepreneurs and small businesses try to handle their intellectual property (in this case, trademarks) independently. While this works in some circumstances, entrepreneurs and small businesses often make the same mistakes when dealing with trademark searching and clearance which could be avoided relatively easily. Trademark searching and clearance involves the collection and analysis of information in order to assess a potential trademark’s viability from an availability and protectability standpoint. The process of trademark searching and clearance is crucial for businesses from a risk management standpoint, particulary those who rely heavily on a specific logo or brand. Consequences of an inadequate search or, God forbid, the failure to search can be drastic and can include being sued for trademark infringement (which can result in significant monetary damages) and/or an injunction that completely stalls a product launch or advertising campaign. While the process of trademark searching and clearance can be complicated, there are common mistakes that an entreprenuer or small business can take steps to avoid. Common Mistakes To Avoid: #1) Failing to Consult a Trademark Attorney: While this may come across as redundant, manipulative or simply not heplful from a common sense standpoint, it is no lie that many entrepreneurs and small businesses get into trouble with their brand, logo or other trademark assets because they made decisions or took actions without consulting a trademark attorney. (NOTE: a “trademark attorney”) Searching a trademark can be complicated and there are many potential pitfalls which can be avoided if an entrepreneur or company consults an experienced trademark attorney first. Most trademark search mistakes occur when the process of searching and clearance is conducted by a business manager or other personnel or, surprise surprise, by an attorney who does not specialize in trademarks. Therefore, make sure the attorney you consult actually has experience in trademarks.   Stay tuned for additional common mistakes that you can avoid in the trademark search and clearance...

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Patents: Is It Too Late To File??? PART 3

Posted by on Jul 23, 2013 in Intellectual Property

Continuing our discussion on patents and when and whether to file one…  So, is it too late to file? As we have emphasized over the last few posts, it is crucial for inventors to keep the novelty of their invention—i.e. whatever is new about your invention—a guarded secret.  If you disclose your invention without any protection, say, without a non-disclosure agreement, it can be rendered non-patentable. In the absence of the protection of a non-disclosure agreement, most public disclosures of an invention made before a filing date at the USPTO is obtained will prevent an inventor from obtaining patent protection for the invention. There is one and only ONE exception to this rule: If the disclosure is limited to a publication made by the inventor or someone on behalf of the inventor within one year before the filing date of the patent, it does not become a part of the prior art.  However, relying on this one-year period can be extremely risky. That’s the only exception. Under the old regime, other public disclosures (like offers for sale, trade show exhibitions, etc.) did not necessarily become a part of the prior art, if the patent’s filing date was within a year of the disclosure. Now, there is no 12- month grace period for these types of disclosures. Tying this Part 3 discussion in with last week’s Part 2 discussion on provisional patent applications, this disclosure rule shows how powerful provisional patent applications can be—because they may be used to obtain earlier filing dates on patents that issue.  (See Part 2 from last week on discussion of provisional patent applications.) Remember: Once you file a provisional application, you have reserved your filing date. And as long as your actual patent application is filed within a year of your provisional patent application (and everything else goes smoothly), you will be entitled to keep that earlier filing date of the provisional application. If this sounds tricky, it’s because it is tricky. Don’t risk patent forfeiture. Make sure you know what you should do, shouldn’t do, and when by contacting a registered patent...

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When To File For A Patent — PART 2

Posted by on Jul 19, 2013 in Intellectual Property

Other Important Events in the Patent Timeline Provisional Patent Applications So, as we discussed last week, ideas aren’t patentable.  But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent?  Full-blown patent protection is not available until the patent issues; however, if an inventor files a provisional patent application, the USPTO will give the future actual patent the filing date of the provisional patent application. This earlier filing date may be extremely important; in the United States, patents are no longer granted to the ‘first to invent’. Since the America Invents Act took effect earlier this year, the USPTO now grants patents on a ‘first to file’ basis. When a contest to be the first heats up, an earlier filing date preserves your priority as the initial inventor who is entitled to patent protection. A provisional application has other benefits, including allowing inventors to mark their inventions with “Patent Pending.” Other benefits are discussed below. While a provisional application typically includes a description and/or drawing of the invention, it does not require any claims, oaths, or disclosures of the prior art like an actual patent application. Some warnings: a provisional patent application is not a patent; it actually is never examined by the USPTO. Therefore, to be granted a real, protection-providing patent, the inventor must file an actual patent application within one year of the provisional application or risk patent forfeiture. This shows how powerful provisional patent applications—which may be used to obtain earlier filing dates on patents that issue—can be. Once you file a provisional application, you have reserved your filing date. And as long as your actual patent application is filed within a year of your provisional patent application (and everything else goes smoothly), you will be entitled to keep that earlier filing date of the provisional application. For further discussion on when to file your patent, stay tuned for PART 3: “Is It Too Late To...

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