• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Firm Quoted in Newspaper Regarding Recycling

A few months ago, the firm was recognized as a Green Business Leader. Now the word is getting out. I was interviewed last week by the Arizona Republic regarding the program and recycling in Phoenix generally. You can see the article here.



Green Business Certification

This week the law firm was recognized as a Green Business by the City of Phoenix. We are the second law firm in Phoenix to be recognized for its efforts in diverting material away from area landfills. We emphasize all three important elements of reduce, reuse, and recycle to conserve resources here at the office.  We’re thrilled with the recognition, but more concerned that other businesses may be missing the opportunity to reduce their footprints.

If you’d like more information about our efforts or the efforts of the City of Phoenix, please give us a call and we’d be happy to talk with you about how you can help.



US Patent Application Filings Under the Paris Convention

A US patent application may be filed on a number of bases. Most applicants think of directly filing an original, non-provisional patent application in the US. However, roughly half of the patent applications actually are filed by non-US entities and have foreign priority claims. A foreign priority claim allows a later-filed application to adopt the filing date of an earlier-filed application, which can be valuable during examination of the application. A foreign priority claim is proper when the US application is filed under the Paris Convention or as a national phase entry under the Patent Cooperation Treaty.

When an applicant files a US application with a foreign priority claim, a copy of the foreign priority application must be submitted to the US Patent Office. The copy must be a certified copy, which means it has to be reviewed and stamped by the foreign patent office. Foreign priority documents do not need to be provided at the time of the filing, but they do need to be provided. So while timing is not of the essence, compliance is important.

There are two mechanisms for providing the priority documents. The first mechanism is simply filing and submitting the certified document with the US Patent Office. There are fees involved with obtaining a certified priority document, and it takes time to request the document, wait for it to arrive, and then ship it to the office.

The second mechanism uses the Priority Document Exchange program. Some patent offices around the world have subscribed to the PDX program, and if the earlier-filed application was filed in one of the countries, the applicant can request that the office of earlier filing electronically transmit the earlier-filed application to the office of later filing. Provided that foreign filing license and other requirements are complied with at the earlier office, that office will transmit the application. There is no governmental fee for such a request, and it can save considerable time and administrative work.



Food Truck Trademarks

No longer a trend, food trucks are here to stay as restaurant alternatives. Outside of my stomach, I have an academic interest in food trucks: they are great at branding (or they’re not great, and then they disappear) and present all sorts of trademarks issues. Food truck trademarks are great examples of unique branding that you don’t see in other industries so nearly ubiquitously.

At a festival, a concert, or any event that brings in a dozen or so food trucks, customers walk the rounds and often remember the truck with the best – or most outlandish – branding. Branding incorporates a number of things: paint schemes on the truck, structural elements or decorations, and of course, the name of the truck.

I often discover what type of food the truck actually serves long after I’ve been hit with its branding. Until I’m about 6 feet away, I can only see the truck, not the menu, which might be on a chalkboard, a sandwich board, or even just a piece of printed paper. This experience demonstrates to me that the image the truck presents is much more important in initially attracting the customer than the food itself.

You’ll see a whole variety of branding on food trucks. Some are vintage or retro – airstreams, simply-designed milk trucks. Some are insanely elaborate – decorated like real hamburgers or sushi rolls. Some have bright paint jobs, and some opt for flat matte schemes.

You’ll also see a wide range in names, from things like “That Food Truck” to “The Moose is Loose.” Perhaps it is obvious, but food truck names are incredibly important to their vitality because of the way they often advertise their location. On social media, it can be difficult to discern food trucks, and if a The Fry Guy truck says it will downtown at 3:00, but The Fry’s Guys truck says it will be midtown at lunch, you’re going to have some customers going to the wrong truck. If you’re the truck on the wrong side of this confusion, you’ll see some lost sales, maybe even no customers at all.

Food truck owners need to think about many things when launching, operating, and selling their food truck business, like:

1) Develop and protect a great name, logo, and/or slogan
Because the name is so crucial to a social media presence and the ability to advertise, food trucks have to give a great deal of thought about their names. This doesn’t just mean coming up with something catchy, it has to be protectable. If you can’t protect it, the name will become a liability. I’ve seen companies go out of business because they didn’t pick good names, and someone else with a similar job stole their customers. If a food truck starts with a bad name, it will battle uphill from the get-go to keep other trucks out of its space.

A food truck name should be clever, and it should not be descriptive of the food or the service provided. “The Food Truck” is not a good name for your business – it immediately describes the service, and protectable rights will almost certainly never vest with this business. That can represents a huge loss of value in a future sale of the business.

A food truck trademark should also be cleared by a professional trademark attorney. An attorney can give you an idea whether the name is appropriately distinct, but also whether there are similar names already registered. If there are, those other names may prevent you from protecting or even using your name.

The above goes for logos and slogans – if you’ve got a clever and distinct design or catchphrase, run it by a local trademark attorney to make cure it looks clean.

2) Develop and protect trade dress
You can protect the way your truck looks – the shape, the design, the paint scheme. If you’re planning to have several food trucks, or to franchise across states, trade dress protection could be a valuable way to prevent others from running a truck that looks like yours.

3) Use your branding correctly
This one is fairy easy for most food trucks. Placing the name on the outside of the truck, on menus, on your social media, all to advertise your food or your food truck services, is appropriate. Use your trademarks as an adjectives, not as nouns – call it “The Giant Donut foo  d truck,” not “The Giant Donut.”

4) Patrol your rights
Watch out for others using names similar to yours. Practically, you should be especially aggressive on social media. You don’t want anyone to start using a name similar to yours that might siphon customers, or might reduce your ability to signal to your loyal base where you’re stopping tomorrow afternoon. Beyond this, you need to make sure other businesses, restaurants, bars, aren’t using names like yours, and aren’t registering trademarks like yours. Cease and desist letters can be helpful ways to let other companies know they should pick a new name or change their existing name.

If you have other questions about food truck trademarks, contact a local trademark attorney, or Tom Galvani here.



What is a Notice of Allowance in a Patent Application?

A few posts ago I discussed trademark notices of allowance. On the patent side, a notice of allowance is a different instrument. It indicates that a patent application has been approved. When a patent application is filed, it is initially processed for formalities and then eventually examined by a patent examiner. The applicant works with the examiner to move prosecution of the application toward allowance. If an examiner issues a notice of allowance, that means that prosecution has, for all intents and purposes, ended and that the claims defining the scope of protection are allowable. The applicant and examiner, essentially, agree on the proper scope of protection.

However, a notice of allowance does not naturally result in the issuance of a patent. Rather, it indicates which claims can be allowed and the reasons they are allowable, or how they are different from the prior art. The notice of allowance provides a 3 month window in which the applicant can file final issue paperwork and pay the issue fees. If the paperwork and fees are lodged within that 3 month window, the patent should generally issue; if not, it will not.



Top Reasons a Patent Application Gets Rejected

There are many reasons a patent application can be rejected by the Patent Office.  Below are a few of the main reasons it could be:

  1. Invention is Obvious. “Obvious” is a technical term in the patent world. It does not indicate that the invention is obvious in the ordinary sense of the world. The test is slightly more objective than that: It means that a single reference, or the combination of several prior art references, renders the invention obvious. In other words, the invention’s claimed elements can also be found in the prior art and there is some reason to combine those claimed elements together to form or build your invention. This rejection gets made frequently and can be difficult to overcome.
  2. Lack of Novelty. A finding of novelty means there is no single reference – a past patent, application, disclosure, article, product, etc. – which is essentially the same as the claimed invention. Novelty is a problem if an invention is too close to a single something which has been done before. Novelty is different than non-obviousness, because while an obviousness rejection can be built on the combination of several references, a novelty rejection must rely on just one reference.
  3. Claims Written Incorrectly. This can be a big problem for the pro se applicant, an inventor that represents himself or herself. Claims are incredibly difficult and demanding to write – the Supreme Court itself has stated that patent claims represent the most demanding legal instrument to draft. There are a number of pitfalls when writing claims. If the claims are not punctuated correctly, they will be rejected. If the claims discuss elements that aren’t properly introduced, they will get rejected. If the claims are directed to material not discussed in the written description, they will get rejected. If the claims are directed to material not identified in the drawings, they will get rejected. If the claims use terms inconsistently, or refer to features or arrangements in the alternative, they will get rejected. If the claims are not written in a proper dependent form, they will get rejected, or may incur expensive surcharges. The claims are a potential minefield of rejections.
  4. Issues with the Drawings. Patent drawings used to have formal, rigid requirements. Many of those requirements have been loosened, but there are still a number of ways the drawings can create problems. Introduction of shading, greys, or colors will often lead to a rejection. Stray marks, blurry lines, and smudges will cause problems. If a drawing is indicated as having only pure black-and-white marks, but actually contains some grey (even grey that looks entirely black), the drawing quality will be extremely reduced when the application is published, and this can lead to a rejection.
  5. Issues with the Written Description. The written description provides support for the claims. Without adequate support, the claims cannot mature into any grant of protection. A lack of written description support can manifest in a few main ways. First, the written description may not disclose the best mode of the invention. Although this requirement has changed over the past few years, the best embodiment, or best way, of practicing the invention must be disclosed somewhere in the application. Second, the written description may fail to describe how the invention is made and used. The written description has to describe the invention with sufficient specificity such that someone skilled in the relevant industry could make and use the invention. Third, the written description must be of sufficient detail so as to clearly convey to the public that the inventor has actually invented the claimed subject matter and was in possession of the invention.
  6. Invention is for Non-Patentable Subject Matter. This rejection arises infrequently, but when it does, it is difficult to overcome. Most things are patentable. But some just aren’t. For example, you cannot patent the law of gravity, or a mathematical formula, or a method of organizing human behavior. Such rejections frequently arise in the context of software applications; software applications and processes used to be largely patentable, but the Supreme Court eroded much of their eligibility for patenting in the first half of the 2010s.


WTC Sues Ironman For Kids for Trademark Infringement

The Tampa-based Word Triathlon Corporation, owner and licensor of the IRONMAN, M DOT, and various Ironman-related trademarks, has sued a San Antonio, Texas company for using the domain name “ironmanforkids.com.”

Beyond the famous IRONMAN trademark, WTC owns the trademark for IRONKIDS and many other IRON-formative marks. My own daughter has done a couple of these IronKids fun-runs before my races. WTC alleged trademark infringement and tarnishment of its reputation. Ironman For Kids apparently seeks donations to help children. WTC likely isn’t complaining of the fact of the charity, but rather that charities outside of its selection were identified as beneficiaries; the World Triathlon Corporation often selects designated charities for certain races, so that one or a few specific charities receive a benefit from one community by design.

WTC had sent a cease-and-desist letter before filing suit, but the recipient refused to budge and instead offered to sell the domain to WTC. Such actions can often prove to be incredibly damaging, as may be considered evidence of a bad faith registration, done merely to extract a premium from a trademark owner.

Often, a UDRP proceeding is a common mechanism for taking down or transferring a domain name. I ran a search through WIPO and FORUM – the two arbitration bodies for UDRP disputes – and found no history of any cases. Thus, it appears that WTC did not seek to have the domain name taken down and transferred, but instead opted to file suit directly.



What is a Trademark Statement of Use?

Earlier this month I wrote about Notices of Allowances in trademark applications. A Notice of Allowance is the United States Patent and Trademark Office’s manner of moving the substantive portion of examination toward registration; the Office notifies the applicant that application seems ready for registration and then invites the applicant to submit proof that the mark is being used in commerce. The Statement of Use is the applicant’s official response to the Notice of Allowance.

No trademark application, but for some with foreign priority claims, registers without proof of use of the mark. The Statement of Use submits proof of use. It includes a number of things. First, the Statement of Use declares that the trademark is in use in commerce with the goods and services identified in the trademark application. Second, it declares a date that the mark was first used in commerce. Third, it declares a date that the mark may have been used, regardless of whether such use was in commerce or not. Fourth, the Statement of Use provides a specimen, or an example of how the mark is being used. Multiple specimens are sometimes submitted. If the application contains multiple classes – different categories of goods and services – a specimen for each class is required. Sometimes, applicant will also file multiple specimens within a class as well.

A Statement of Use is a filing that swears that the mark is being used on all the goods identified in the application. If some of the goods or services aren’t being offered, an applicant should remove those goods not offered, lest the application and resulting registration be at risk of later cancellation, generally.

A Statement of Use must be submitted within six months of the Notice of Allowance mail date. If it is filed late, it will not be accepted unless accompanied by a Petition to Revive. However, the six-month deadline can be extended. A Request for Extension of Time to File a Statement of Use asks for an additional 6 months to submit the Statement of Use. Further Requests can be filed, but no more than five extension can be obtained in a single application. Failure to file the Statement of Use after the fifth extension results in the abandonment of the application.

The Statement of Use is thus the official mechanism for responding to a Notice of Allowance and presenting the necessary proof of use to finalize the trademark application.



What is a Trademark Notice of Allowance?

Filing a trademark application with the United States Patent and Trademark

Sample Notice of Allowance

Office initiates a lengthy process for the search, examination, and potential registration of a trademark. The Trademark Office reviews applications for technical and substantive requirements before allowing a mark to register. However, no application – with the exception of those based on foreign trademark registrations – is allowed to register without proof that the mark has actually been used in the marketplace. A Notice of Allowance is one part of the trademark application process.

Some trademark applications are filed on an in-use basis. This means that the mark is in use at the time the application is filed; the owners are actively selling their products under a brand, the company is promoting its services under a logo, or some other public, commercial use is being made of the applied-for trademark.

Other trademarks are filed on an intent-to-use basis. This means that the applicant, at the time of filing, is not using the trademark, but does have an intent to do so in the near future. At some point in the application process, the applicant must offer up proof that it has begun to use the mark in commerce.

In an intent-to-use trademark application, proof of use can be submitted early in the process. This is done by filing an Amendment to Allege Use. The Amendment to Allege Use provides the Trademark Office with an example of how the trademark is being used commercially, when the trademark was first used commercially, and then requests that the application be processed as an in-use application moving forward. An Amendment to Allege Use is not a required filing, and we file very few of them. There can be strategic reasons to file or not file an Amendment to Allege Use, but often times an Amendment to Allege Use is not filed simply because the applicant has not put the trademark to use in time.

If no Amendment to Allege Use is filed, then the Trademark Office reviews and processes the trademark application normally. If all goes well, after a publication period, the Trademark Office will issue a Notice of Allowance to the applicant. The Notice of Allowance invites the applicant to submit a Statement of Use. A Statement of Use if very similar to an Amendment to Allege Use, but is submitted after the publication period. The Notice of Allowance places a deadline on filing a Statement of Use of 6 months. If not Statement of Use is filed, the application is abandoned unless the applicant files a request to extend the time to file an SOU.

The Notice of Allowance is thus the Trademark Office’s way of formally inviting the applicant to submit proof of commercial use of the mark, and restricting the amount of time in which to do so. This moves the trademark application forward to registration or lets it abandon.



Information Disclosure Statements in Continuing Patent Applications

When filing a continuing patent application, such as a continuation, continuation-in-part, or a divisional, it may not be necessary to submit a new Information Disclosure Statement.

When a continuing application claims benefit to a U.S. parent application, it is not necessary to submit an IDS that identifies the prior art cited by the Examiner in the parent application. The only reason to do so is if the applicant wishes such prior art information to be printed on the issued patent. The Examiner will consider prior art that was made part of the file history of the parent application regardless of whether it is presented in a new IDS or not.

However, that does not absolve an applicant from ignoring the IDS. A continuation-in-part will present new material, and will claim new material. Such new claimed subject matter could rope in different relevant art, and it would be appropriate to file an IDS that identifies at least that new art. A continuation or divisional application – even though they don’t present new subject matter – could claim subject matter not claimed before, and thus could require submission of a new IDS.

In short, if newly claimed subject matter is presented, an IDS may very well be likely. If the same subject matter is claimed, an IDS might not need be filed. However, caution, and the risks associated with not disclosing information, might direct one to file an IDS in a continuing patent application.