On Line Chat Transcripts
When filing your design logo...do you need to include the TM in the drawing submitted. And, my second question is: I was told to use the Regular TEAS form to file this Trademark, because if there are any mistakes...it won't be $50- each mistake. Now, when filing the form...if I send it through standard mail, opposed to doing it electronically is it more money to do that.
Do not include the TM in your drawing. Sending a paper application using regular mail will cost more. TEAS filing costs more than TEAS Plus but less than sending paper through regular mail.
Thirty Years Invention
I have an invention that I have been using for 30 years invention; can I apply for a patent?
Unfortunately a 30-year invention that has been in public use is not entitled to patent protection. If an invention has been in public use for more than 1 year you are barred from seeking patent protection.
To Produce a Product that Already Exists
(i) If I want to produce a product that already exists in the market place and has already been granted a patent, would I be infringing on their patent protection even if my product has significant differences and modifications? (ii) What are the chances of being granted a patent if the product functionality is similar but not exactly the same because of these modifications? (iii) Can you explain the "Test of Obviousness"?
The response to (i) and (ii) leans more to legal advice and you should probably contact a registered patent practitioner to obtain an opinion on these questions. The USPTO does not provide legal opinions on infringement and cannot provide an opinion regarding whether something is patentable or not without the filing of a patent application. As to (iii), the Office applies the inquiries set forth by the Supreme Court in Graham v. John Deere to determine obviousness. The examiner (1) determines the scope and content of the prior art, (2) ascertains the differences between the prior art and the claims in issue, and (3) resolves the level of ordinary skill in the pertinent art. The examiner will also evaluate evidence of secondary consideration. See MPEP 2141 ( http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf ). The examiner then determines whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.]
Even though there is no patent protection for patent pending, trade secret protection under the code remains vital - does it not?
Regarding your question pertaining to “patent pending”, use of the term alerts the public to the fact that you have an application pending before the U.S. Patent and Trademark Office. Unless you have requested non-publication, non-provisional patent applications are generally published at 18 months. So yes, while trade secret protection is another intellectual property protection tool, if you have filed a patent application disclosing your invention, it will not be maintained confidentially after 18 month publication. If one wishes to pursue protection of a trade secret, a patent application should not be filed. These approaches are generally alternatives to one another, not used in combination.
Can an individual apply for a Trademark? Or do I have to incorporate a company first, before applying for a trademark?
An individual may apply to register a trademark. You do not have to be a corporation or other formally organized legal entity to apply.
I have a trademark. I paid for its production, use it as my company logo, use it on my business card, website and so on. What is the best measure to protect it on a long-term basis. I'm speaking of lifetime if possible. Can I keep someone from using it in commerce if I don't have it on packaging or the product?
In order to qualify for trademark registration, your mark must be used in a trademark manner. If your mark is used on goods, the mark must appear on the goods as it moves in commerce. Use on websites, business cards or as a company logo is usually not considered trademark use. However, if your use meets, or will meet, the criteria for trademark registration, your registration can exist as long as the owner files the required maintenance documents. As far as stopping someone from using it in commerce, that is something that you must discuss with your own, private trademark counsel.
While researching trademark names for a new product, I found several companies with live and dead trademark names that are identical. First, what is the difference between a live and dead trademark name? Secondly, can I still trademark my name if the product is in a different category ( i.e. computer goods versus clothing)?
A live trademark registration means that the registrant has filed all necessary maintenance documents and the trademark remains viable. A dead trademark registration means that the registrant has not filed the necessary documents and the registration has lapsed. It does not necessarily mean that the trademark owner is no longer using the mark - it's simply not registered.
To answer your second question, similar trademark registrations can co-exist on the register so long as the goods or services identified in the registration are adequately different so as not to raise a likelihood of confusion in the purchasing public. That means, the public wouldn't think that those goods and services are emanating from or sponsored by the same commercial entity. The class has no impact on this - it's the actual goods or services recited in the registrations that control this determination.
Can I trademark the unique name of a process on my own, avoiding the costs of a lawyer to search and file?
You can apply to register a trademark for goods or service - not for a process. You could register a mark for the goods involved in the process or for the service of providing the process to the public. As for searching and filing your application, you can search you mark and file your application on-line at the USPTO website.
If I want to get a trademark for my product do I have to be an American?
No you don't have to be an American citizen to apply to register a trademark in the US. Simply fill out the online trademark application form accurately for your specific situation.
We want to apply for a trademark, but a Trademark and a Service Mark already exist with the same name, but with a space in between the two words. They are both in different classes compared to the class we wish to file the Service Mark in. What is the probability of getting it approved?
I can't give you an indication of the possibility of getting your mark registered. That is considered legal advice and the USPTO cannot give legal advice concerning your particular circumstances. However, the standard used in the office when examining marks is whether the marks have a similar sound, look or meaning and whether the goods or services are similar or related to each other. However, remember that marks approved by the USPTO attorneys are then published for opposiion. Any party that believes the mark should not register can bring an opposition proceeding. The decision whether or not to apply under these circumstances is up to you.
If an important part of your trademark is that it appears as a light color (say, white) on a dark field (say, black), does it need to be submitted that way? If so, is the trademark then not apply if you use it in a different color combination (like silver on brown)?
The clearest answer is that you are protected for exactly what is shown in your registration. Sorry, Liz, this answer is for the question immediately above.
I just started a business and am wondering what the best way is to come up with a trademark to help build my brand.
This trademark question involves both business and legal considerations. Unfortunately, while the USPTO may provide general information, we cannot give you legal advice regarding your particular situation. You may contact a private attorney familiar with trademark matters for assistance. Local bar associations and telephone directories usually have attorney listings broken down b specialty.
Trademark Attorney Compares
Can you please advise what an examining USPTO trademark attorney compares/examines when reviewing pending and registered trademarks to see if your trademark will be allowed to be published.
This combines your original question and your present one. The determination of likelihood of confusion is quite subjective. It is possible that the USPTO attorney may have determined that there are no registered marks or pending applications that would cause a problem but the owner of a registered mark or pending application may feel differently. For example, the registrant or prior-filed applicant may have evidence that is not available to the examining attorney that would support a likelihood of confusion. Such evidence can only be brought forth by means of an opposition.
Do you have a similar class registration system as they do in Europe? i.e. say I registered JAMES as the name of a drink could somebody come and register it in another class as they can in Europe?
We use the Nice Classification system in the US as they do in Europe and in many other countries in the world. However, classification does not control one's right. The actual language of the goods or services in the registration defines the parameters of the scope of protection of a registration. Therefore, in the US, a similar mark could register in more than one class or even in the same class if the goods or services are different enough to avoid confusion in the marketplace.
Trademark Contact Number
Is there an organization that we could call to ask questions about filing a trademark application?
Trademark Assistance Center can help. Phone 703-308-9000.
Trademarks-How Long to Register
What is the average time period to register a trademark? Does having a registered TM at all protect your application for a patent, prior to patent issue?
The time varies greatly - the shortest time is about one year. Other than that, it depends on the amount of correspondence between the USPTO and the applicant. Having a registered trademark has no relevance regarding your rights in your patent application.
What types of damages are awarded for trademark infringement?
We recommend contacting the Trademark Trial and Appeal Board (TTAB), accessible via the uspto.gov Website, for general information about possible damages for trademark infringement. Trademark owners may seek actual damages, for example, due to lost profits related to the infringement and, in some cases, attorneys’ fees.
Can the same TM name be used by separate companies in different areas of business and will the TM office approve the application?
Too broad to simply say “yes.” The standard for finding likelihood of confusion is a comparison of the marks and a comparison of the goods or services provided under that mark. The closer either one of those elements are, the more possible is a finding of likelihood of confusion. Thus, it is possible for somewhat similar marks to be registered for differing goods or services. Remember, though, a third party can oppose the registration of a mark even if the Examining Attorney has allowed the mark to publish for opposition.
Where can you register for a trademark on-line?
You can do that at the USPTO website using either the TEAs or TEAS Plus application form. These forms are available at http://www.uspto.gov/teas/index.html
Can anyone trademark something I have already begun and am using in commerce? Can't I oppose them so they cannoy take away my business?
Someone can apply to register a trademark that you may already be using particularly if they have no knowledge of your use. You may oppose the registration of that mark after it publishes for purposes of opposition.
When fighting an opposition to a TM application, should you have an independent company perform a survey to show there is no likelihood of confusion? Is it OK to conduct a survey yourself? Is a survey necessary at all?
Whether or not to have a survey done is a huge legal question with many ramifications. It’s a question that you should discuss with a trademark attorney. The USPTO cannot provide advice on this issue.
Can you trademark phrases as well as single words and internet sites.
Yes, you can register a phrase as a trademark or service mark.
How can I insure that my patent or trademark is protected internationally?
U.S. patents only protect your invention in the United States. To protect your invention internationally you must file applications in each country where you seek protection. The same goes for trademarks. International filings can be quite complicated you may want to consult with a registered patent attorney/agent.
How long does a trademark protect a product name? Does it offer any protection to the individual who filed it?
A trademark registration can exist for an unlimited period of time so long as the registrant continues to file timely renewal documents. In response to the second part of your question, it is the mark that's protected against infringement for the benefit of its owner in an enforcement proceeding.
Are there any general principles that make a trademark strong or weak?
Not all trademarks receive the same level of protection under the Trademark Act. Even when a mark is capable of protection under the law, the protection allowed is linked to the legal strength of the trademark. Generally, arbitrary and fanciful terms are afforded a higher level of protection than suggestive, descriptive, or generic terms. Therefore, you may wish to consider choosing a mark on the stronger side of the continuum
Which is the best to file right away, a trademark, a service mark or an intent to use the service mark and/or the trademark?
You can file them all at the same time. There's no order requirement or advantage.
How do I see if a mark has been trademarked? Also, if I file and the mark is refused, do I get my fees back?
You can search the USPTO database of registered and pending marks to find out if someone has already registered or has applied to register a mark in the USPTO. If you file a trademark application and the USPTO examining attorney assigned to your application finds a previously registered or applied for mark that would cause a likelihood of confusion and you cannot overcome that refusal (or any other refusal that might be raised) to register your mark, your fees are not refunded.
How can I conduct a search for common law trademarks?
A common law search involves searching records other than the USPTO’s database of federally registered, pending, and dead marks. Often common law searches involve searching the Internet, telephone and industry directories, state trademark registries and other listings. The USPTO does not conduct common law searches. You may wish to speak with a private attorney familiar with trademark matters to decide whether a common law search will benefit you.
So the USPTO will not conduct a common law search to determine whether or not to grant my trademark application? Or the USPTO just does not offer this service?
The USPTO does not include either common law or state databases when it is considering whether an applied for mark should be refused registration under the Trademark Act.
Is there a link where we can get the status of a Trademark?
Yes, go to http://tarr.uspto.gov/
Where can I get a transcript of this chat next week? I got on late and would like to have the entire chat.
The transcript will be available on the USPTO homepage, www.uspto.gov.
My husband has developed tools that do certain mechanical jobs far better than existing tools, but we're not sure what type of patent application we should submit. With the applications, are digital photos OK or do we have to make a drawing of some kind?
You are probably interested in filing a utility (non-provisional) application. When filing a non-provisional application it is very important to completely describe your invention. Digital photographs are not accepted by the Office. You will need a black and white drawing of the tools. Color photographs may be accepted if accompanied by the appropriate petition and fee. See 37 CFR 1.84. http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
If you want to protect solely what the tools look like (the appearance) you may be interested in filing a design application.
Usage of a TM
How do you report someone who fraudulently represents the usage of a TM that is not registered or has any form of a corporate presence in any US jurisdiction?
There is no method for reporting this at the USPTO. The TM indication is just a notation by the user that he or she believes that this mark is their exclusive property. However, it does not indicate that there has been any approval or recognition of the terminology as a valid trademark or service mark under the US Trademark Act. You should consult with a local attorney to find out if there is some method outside of the USPTO for instituting a concern of this kind.
When can I use the TM and SM symbol on my trademark?
The TM symbol is usually used to indicate an unregistered trademark and is used on goods (physical things). The SM symbol is usually used to indicate an unregistered service mark, and is used for services, such as accounting or hotel services. You do not need a USPTO registered trademark, or even a pending USPTO application for a trademark, to use these symbols. However, you can only use the R symbol if your mark is registered with the USPTO.
US Patent Protection
Does Canada recognize a US patent or do we have to file there also?
US patents protect your invention only in the US. You must file separately in every country in which you want patent protection.
Does the USPTO do any foreign patent search as part of the utility patent issue process?
Yes, we search all appropriate areas including foreign patents and publications.
Can I file a utility before a design patent?
You can file a utility patent application and then a design patent application; a design patent application and then a utility patent application; or you can file both a design and utility patent application at the same time. These two types of patent applications provide different types of protection.
In a utility patent, are you only granted protection for your claims?
Claims define your legal protection.
I wish to file a utility patent on an invention for which I have already filed a design patent. The design patent has been allowed and the issue fee has been paid. Can I still file for the utility patent? How much time do I have within which to file?
Yes, you can file the utility application. If you are claiming priority to the design application then you must do this before the design patent issues.
Is the term for utility patents not 14 years?
You are correct, U.S. utility patents generally have a term of twenty years from the filing date of the application or if the application contains a specific reference to an earlier filed U.S. application under 35 U.S.C. 120, 121 or 365(c), then from the filing date of the earliest such application.
Utility Versus Design Application
Is PTO/SB/01 the utility/design application form?
PTO/SB/01 is the declaration for utility/design applications and should accompany your application; you may want to contact our Inventors Assistance Center at 1-800-786-9199 for additional information.
Utility versus a design application?
A design patent only protects the way an article “looks,” i.e. size, shape, configuration, dimensions, overall appearance. A design patent only has one claim and the claim refers to “the ornamental design for the article (specify name) as shown or as shown and described.” The term of a design patent is 14 years from the date of grant. A utility patent protects the way an article is used or works. A utility patent can have more than one claim. The term of a utility patent filed on or after June 8, 1995 is generally 20 years measured from the U.S. filing date. For additional information regarding the differences between a utility patent and a design patent, see MPEP 1502.01 (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_1500.pdf ).
I have invented a fashion accessory that uses an integrated circuit. Should file for a utility patent or a design patent?
The accessories' ornamental design may be protected by a design patent and it's function may be protected by a utility patent.
How many women inventors are there? Is the number of women inventors increasing over time?
We don't actually track by gender, but here is a link to demographics we have, http://www.uspto.gov/web/offices/ac/ido/oeip/taf/index.html
How far along in the invention process do you need to be in order to apply for a patent? Do you need a working mock-up? Is a prototype necessary?
The Office requires an oath or declaration, written description, a least one claim, drawings if necessary for the understanding of the invention and a fee. A working model is not required in order to obtain a patent. The filing of an application which completely describes the invention is considered to be a constructive reduction to practice and is sufficient.
I have an idea for a new home product. Do I have to manufacture a working model before I am issued a patent?
A working model is not required in order to obtain a patent. The filing of an application which completely describes the invention is considered to be a constructive reduction to practice and is sufficient.
Do you need a working prototype in order to get a patent for an invention?
A working model is not required in order to obtain a patent. The filing of an application which completely describes the invention is considered to be a constructive reduction to practice and is sufficient.