FAQs of TRADEMARK & PATENT

 

 

FAQs of TRADEMARK

Why should I register my mark?

Registration gives you these advantages:

The registration becomes "constructive notice" of your ownership of the mark. That is, once your mark is registered on the Principal Register, anyone anywhere in the United States who starts to use the mark is presumed to know about your use. This can be important, since in the absence of a Federal registration, if someone in another state starts using the mark without knowledge of your use, they will have the right to continue using it, and may also be able to stop you from expanding your use.

You may use the r-in-a-circle ® notice.

You may sue in Federal Court.

Your registration can be used in disputes over internet domain names to defeat a domain name owner who does not have a registration, at least according to current rules.

Statutory damages and treble damages are available, the latter in cases of "counterfeit" goods.

After five years of registration on the Principal Register, you can have the mark declared "incontestable", which means that no one can later stop you from using it, even if you adopted after they did.

If your mark is registered on the Principal Register, you can file it with the US Customs and Border Protection Agency, which can help in stopping importation of infringing goods. 

 

What kinds of things can be a trademark?

Pretty much anything which can serve to distinguish your product or service from another's:

A word or name: "Exxon" for petroleum products, "Century 21" for real estate services.

A phrase or slogan: "I'm lovin' it" for fast food (McDonalds), "Where do you want to go today?" for software (Microsoft).

A way of presenting a word: the "stripey" IBM logo, or Walt Disney's signature on films.

A symbol or drawing ("logo"): The Rock of Gibraltar for Prudential Insurance, or the alligator (crocodile?) on Izod shirts.

A character: Mr. Peanut (Kraft), or the Exxon tiger (on top of this page!)

A shape: the famous Coca-Cola bottle.

A distinctive building design: KFC's striped roof, McDonald's Golden Arches

Details of packaging ("Trade Dress"): The L'eggs egg for pantyhose; the red-and-white label on Campbell's Soup cans.

In rare instances, other things, such as: 

A sound: Tarzan's yell or the MGM lion's roar 

A spoken phrase: Aamco's "Double A" beep beep "M C O" or the Jolly Green Giant's "Ho Ho Ho"

A sequence of notes: the NBC chimes (hear them: MP3 MIDI Real)

A piece of music: the Harlem Globetrotter's "Sweet Georgia Brown" or the Lone Ranger "William Tell Overture" theme
(For an interesting page on sound marks, with examples of all of these and more, see the USPTO website)

A color: pink for Fiberglas® insulation; or a combination of colors: Green body and yellow wheels, for John Deere tractors. 

A fragrance: a floral scent applied to Clarke thread 

A light display: "pre-programmed rotating sequence of a plurality of high intensity columns of light projected into the sky to locate a source at the base thereof" for Ballantyne of Omaha

 

What is the difference between TM and the R within the circle ®?
Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

PLEASE NOTE: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

 

What information do I need to provide for an application to register a trademark?

For us to prepare an application for you, you will need to provide the following:

Information on the Mark

The mark you want registered. 

If the mark is anything other than a word or words in English which can be registered in typed form without any special typography, then we will need a clear drawing of the mark. This drawing will become the image on the printed registration, when it issues, so it is important that it be as clear and crisp as possible. We can accept the drawing in printed form, suitable for scanning, or (better yet) in electronic form as a GIF, JPG or TIFF image file. If you use the mark on a web site, give us the URL and we can download an image from the site. Note that a drawing image is required for word marks only if they must be in a specific type font or format, or if they use any special or non-English characters ("stylized").

If the drawing is in color, we need to know whether or not you actually want to register the colors - in most cases it's better to file the application without reference to color, in case you will be using the mark in black-and-white or other colors at some point. 

If color is a necessary part of the mark (think of the "Mobil" logo, with the blue letters and red "o"), then we need a verbal description of the colors as used in the mark, and how they are used. Do not assume we will recognize "turquoise" or "teal", or realize that only part of a letter is aquamarine, and the rest is royal blue  - if something needs to be sky blue or taupe shading to burnt umber, say so. The drawing must also be in color, and must match the verbal description. 

If the mark is not in English, we will need a translation of the mark into English.

If the mark is not rendered in the standard western (Latin) alphabet (that is, it is in the Cyrillic or Arabic or some other alphabet, or consists of Chinese or Japanese characters), we will need a transliteration of the mark - that is, what does it sound like when it is pronounced? 

If the mark is something which can't be represented in a simple drawing (a sound, a color (as such), etc.) we need a description of what the mark is. We may need other material as well, for example a recording of a sound - we will advise you accordingly once we know what the mark is. 

If you own previous registrations for the same (or very similar) mark, please give us the registration number(s). 

Information on the Mark Owner

The name of the trademark owner.

What kind of entity is the trademark owner? (i.e., a Pennsylvania Corporation, New York Partnership, individual United States citizen, Spanish Limited Liability Company). 
Note: If the owner is an individual from a country which does not always follow the US standard of given name first, followed by family name, please avoid confusion by either capitalizing the family name ("CHOU Hong-Sin" or "Hong-Sin CHOU") or specifically indicating which is the family name ("Chou Hong-Sin - Chou is the family name").  

The address of the trademark owner. 
Note that neither we nor the USPTO are familiar with the particular addressing conventions of every country. 

In the US, the standard address is: 
## Any Street - XXX
City, State ZIP
where "##" is the house number, XXX is an apartment or office number or the like, and ZIP is the postal code.  

If the address is a named building, then it would appear as:
XXX M & T Bank Building
## Any Street
City, State ZIP

If your country uses any other standard, to avoid confusion please indicate which parts of the address are Building name/number, Street Address, City name, and which is a postal code. If part of the address is a prefecture or state or other political entity, it would help to label that as such, too ("Mie Prefecture").  

If the trademark owner is a foreign entity, and/or if the application is to be based on a foreign application or registration, there are other requirements - contact us for details.

Information on the Use of the Mark

A description of the goods or services on which the mark is (or will be) used. Note:

The USPTO requires a very detailed list of goods in applications - not just "clothing", but "t-shirts, skirts, socks, men's jackets and dirndls". If you're filing an "intent to use" application, you can list any item on which you intend to use the mark - but if you are filing based on actual use in commerce, you must make sure that you have used the mark on every item on the list. Many applications and registrations have been declared invalid for fraud because the owner was not selling some of the items on a long list of goods.

You can find a searchable list of acceptable descriptions on the USPTO website. Any description you find on that list will be accepted by the Trademark Examiner - but remember that the most important thing is to describe your goods or services accurately, not to find wording the Examiner will automatically accept. If what you're selling or doing does not appear to be listed, come up with your own accurate description rather than pick something close, but wrong. 

Also, if you provide services, you need to describe them as services. That is, suppose your business is embroidering custom t-shirts for others, who then sell the t-shirts under their own brands or in their own stores. In such a case, the consumer of your services is the company who hires you to do the embroidery, not the person who wears the shirt, and your description should be "embroidery of t-shirts" in services class 040, not "t-shirts" in goods class 025 (clothing).  Of course, if you sell the t-shirts directly to consumers through a catalog or on-line, then a two-class registration in both classes might be appropriate. 

Services must be provided for others - if you do your own advertising for your own business, that does not constitute providing advertising services. Similarly, if you make up mugs with the name and logo of your car dealership to use in the waiting room, that's just incidental to your business of selling cars - it does not mean you can register your mark for mugs in class 021.  

We will need to tell the USPTO the date the mark was first used in connection with the goods/services, and the date the mark was first used in interstate or international commerce (if the application is based on use - otherwise let us know the application will be filed on an "intent to use" basis).

If the application is based upon actual use, you will need to supply a "specimen" of the mark as actually used on the goods or services. If you have a web page with clear pictures of the goods, you can just send us the URL and we can get the specimen from there. Note that the specimen is not the same as the drawing. For the drawing, we need a good clear image of the mark. For the specimen, we need a picture of the markas used on the goods or services.

For goods, this means either actual labels, or photographs of the goods showing the mark physically applied to the product - advertising material is not acceptable, unless it contains a photograph of the goods showing the mark. 

For services, advertising material is acceptable, or business cards, flyers, program brochures or catalog pages, etc. 

 

What is a trademark and a service mark?
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

When must I file a §8 Declaration?
The owner of the registration must file a §8 Declaration during the following time periods:
First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court
​Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. See 15 U.S.C. § 1059.NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

What is the "Madrid Protocol"?

The "Madrid Protocol" is a system coordinated by the World Intellectual Property Organization (WIPO) whereby a trademark owner can protect a mark in many different countries by filing one application, based on a national application to register the mark in the owner's country. The application is filed in one receiving office in one language, without the need to separately file in each country. The application fees depend on which countries are selected and, since they are stated in Swiss Francs, will change with the exchange rate.  

The Madrid Protocol was established in 1996, but initially  this system was not available to US nationals. The US signed the Protocol in 2002, and effective November 2, 2003, it became possible to file Madrid Protocol applications through the USPTO. 

FAQs of PATENT

What is a patent?

A patent is a grant by the U.S. Patent and Trademark Office of the right to stop others from making, using or selling an invention in the United States for a limited period of time. Taking this one point at a time:

It is a grant, therefore you do not have it until the government gives it to you (that is, you have no right to enforce the patent against others until the patent issues)
It is a right to stop others and not necessarily a right to do anything yourself (someone else may have a patent which would prevent you from using your invention, even though your invention is patentable).
It is a right to stop others from making, using or selling - any one of these. Thus, even if an infringer were to make the invention in a foreign country, he could not sell it in the USA. Similarly, it is still an infringement if the invention is made in this country but exported immediately, or if a person buys the invention overseas and uses it in the USA for their own use - there is no "personal use" exception for patent infringement.
It is only issued on inventions, as defined in the statute (see "What can be patented", below).
It is issued by the U.S. Patent and Trademark Office, therefore it can only be enforced against other people's actions within the USA. That is, a U.S. Patent has no effect on people making, using and selling the invention entirely outside the USA (although it may serve as a basis for national patents in other countries, each of which would have effect in its respective area.).
It only lasts for a limited period of time, and once it has expired, the patented invention may be freely used by anyone (assuming, of course, no other patent would interfere).

 

How long is a patent in effect?

Utility Patents and Plant Patents are valid for a period starting on the date the patent is issued by the Patent and Trademark Office, and ending, at the latest, 20 years after the US filing date of the earliest non-provisional application upon which the patent is based. There are maintenance fees to be paid during the life of a utility patent, and if they are not paid on time the patent will expire earlier than the maximum 20-year-from-filing term. After the patent expires, the invention is available to all.

Design Patents are valid for a period of 14 years from the date of issue. This will increase to 15 years from date of issue for patents granted on applications filed on or after May 13, 2015, the date that the USA deposited the paperwork necessary to ratify the Hague Agreement. No maintenance fees are due on design patents.

This section sets forth the general rule, applicable to most patents issued in the last few years. Patents which were filed after May 29, 2000, may have their terms extended for USPTO delays. Patents issued before June, 1995, and still in existence at that time, or which were pending at that time, are subject to different rules, and there are other special rules and exceptions which may affect the term of a patent.

 

Who can apply for a patent?
A patent may be applied for only in the name(s) of the actual inventor(s).

 

Can a patent be renewed?

No, it cannot be renewed. Nor can one pick up the rights to an expired patent. Once a patent expires, the invention is in the public domain.

 

Can I have my patent's term extended?

Some patents have had their terms extended, by private laws in Congress, or by a section of the Patent Law which provides for restoration of patent term lost due to government regulatory delays. In almost every case these were drug patents, where the testing and approvals required by the FDA ate up almost all of the patent term. For nearly all inventions, extension is not an option.

 

What makes an invention patentable?

There are three major requirements for patentability: The invention must be novel, useful and not obvious.*

"Novel" means the invention was never described in a patent, published patent application or other publication, and never in public use or on sale, by others before you filed your application.
Important note: all of these also apply to your own actions more than one year before you apply for a patent. In other words, you have one year from the date you first described your invention in a publication, or first sold it or publicly used it, within which you must apply for a patent if you ever want patent protection.

You should also be aware that most other countries do not give this one-year grace period, so if you intend to apply for patents outside the USA, you should have your US application on file before your first publication, sale or public use.

"Useful" generally means that the invention does something, anything at all.
Very few applications are rejected on the grounds of "not useful" - mostly "perpetual motion" inventions and chemical compounds and gene sequences with no known utility. "Useful" does not require commercial marketability - getting a patent does not mean that the USPTO has passed judgment on whether or not anyone really wants the product.

"Not obvious" means the invention must not be an obvious development of what has gone before, in the judgment of an ordinary person skilled in the applicable field.*
This last is often the hardest to define - every invention seems obvious to the inventor, after it's been invented. Usually, "obviousness" is couched in terms of what a combination of references would have taught to the mythical "Person Having Ordinary Skill In The Art" before the invention was created. In other words, your invention is obvious if Mr. Phosita, who knows everything there is to know, would have known to combine these previously-existing inventions to result in your invention, without having seen your patent application first.

* Note: Novelty and obviousness are judged as of the date of invention, for patent applications and patents issued on them having an effective filing date before March 16, 2013 (the traditional "First to Invent" rules). For patent applications having an effective filing date after March 16, 2013, novelty and obviousness are judged as of the effective filing date of the application (the "First Inventor to File" rules). There are also differences between pre- and post-March 16th applications as to what can be used as "prior art" and what date applies to such things.

 

What can and cannot be patented?
What can be patented - utility patents are provided for a new, nonobvious and useful:
Process
Machine
Article of manufacture
Composition of matter
Improvement of any of the above
Note: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.
What cannot be patented:
Laws of nature
Physical phenomena
Abstract ideas
Literary, dramatic, musical, and artistic works (these can be Copyright protected). Go to the Copyright Office .
Inventions which are:
Not useful (such as perpetual motion machines); or
Offensive to public morality
Invention must also be:
Novel
Nonobvious
Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
Claimed by the inventor in clear and definite terms

 

What is the difference between a utility patent and a design patent?
A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Upon request, the U.S. Patent and Trademark Office (USPTO) will send information on utility and design patent applications including forms for filing applications. To request this information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

 

If I get a patent, does this mean that I am free to build and sell my invention?

Not necessarily. A patent is the right to stop others from making, using or selling your invention. It does not necessarily mean you have the right to make, use or sell it yourself.

Someone else may have a patent which will stop you from making, using, or selling your invention (called a "dominating patent")

 

If I request for an early publication, how soon will the application be published?
The publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for publication (e.g., an executed declaration has been filed and the filing fee has been paid).

 

When does the applicant have to pay the publication fee?
For a voluntary publication, early publication, or republication the applicant must pay the publication fee at the time applicant requests such publication (i.e., at the time of filing the EFS submission). For publication of an application filed on or after November 29, 2000, a notification of the publication fee due will be provided in the Notice of Allowance and Fee(s) Due. If the publication (or issue) fee is not timely paid, the application will be abandoned for failure to reply to the Notice of Allowance.

 

What are the requirements for filing a substitute specification?
When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a statement that the substitute specification includes no new matter; (2) a marked-up version of the specification with markings to show all the changes relative to the immediate prior version; and (3) a clean version of the substitute specification.

 

Can I get a patent on my invention but keep the most important parts secret?

No. The price of the so-called "patent monopoly" is that you must tell the world how to practice your invention. If you are manufacturing your invention yourself, and its operation depends on something difficult to reverse engineer, you might want to protect it by a trade secret rather than a patent.

The disadvantage of Trade Secret protection, however, is that once your trade secret is no longer a secret you have no protection. You also run the risk that someone else may later get a patent on your secret process, and will file suit to stop you from practicing the method.

 

I am not a U.S. Citizen or Resident. Can I get a U.S. Patent?

Yes, if your home country extends the same privilege to U.S. citizens (almost all do).

In many (if not most) cases, inventors file a patent application in their home country first, and then file a United States patent application based on this earlier foreign filing. In fact, many countries require their citizens to file in their country before filing elsewhere, or at least to apply for permission before filing elsewhere. This is to allow the government the chance to decide that the invention should not be filed in foreign countries for national security reasons. Most of the time, the permission is routinely granted. The US has the same requirement for US citizens or residents who want to file in foreign countries - it's called a "foreign filing license". If you are considering making your US patent application the first patent filing on your invention, you should check with a patent attorney in your country to make sure that will not cause any problems under your country's laws. 

If you file in your home country first, and if you file a corresponding application here within one year of your foreign filing date (six months, for design patent applications), your home-country filing date will count as your US filing date if your country is a member of a number of "convention" countries, or has a specific treaty with the USA. You may also be able to file an application through the Patent Cooperation Treaty, which you can then file in the US up to thirty months after your priority date.

 

What does "Patent Pending" mean?

Nothing more than that you have a patent application  on file at the U.S. Patent and Trademark Office.

You may mark a product "Patent Pending", if you have filed a patent application (including a Provisional Application) which would cover at least a part of the product, and that application has not been abandoned or withdrawn. There is no legal requirement to mark a product with "Patent Pending", but many feel that there are competitive advantages to doing so.

Note that it is against the law to mark a product "Patent Pending" if you do not have a patent application on file.