Brand Bully Basement

Posted on October 12, 2011 by tom

Lara Pearson, operator of the brandGEEK website, has created an avenue for victims of trademark bullying.  Those who feel they have been wrongly pushed around by someone exerting a little too much influence with a trademark can complain at Brand Bully Basement.  As the forum picks up publicity, hopefully the actions complained of there will begin to recede into our memories…

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The Duty of Candor and Good Faith in Patent Applications

Posted on October 10, 2011 by tom

When a patent application is filed with the United States Patent and Trademark Office, the applicant currently must sign a Declaration attesting to several things. First, that the applicant is the original and first inventor of the claimed subject matter. Second, that the applicant has reviewed and understands the contents of the application. Third, that the applicant acknowledges the duty to disclose all information material to patentability. This is known as the duty of candor and good faith toward the USPTO.

The duty of candor and good faith requires that certain individuals disclose to the USPTO any information that they know of which is material to patentability. Information that is considered material to patentability is not always easy to define. In a harsh perspective, if the information would affect the decision of the USPTO during examination or granting of the application, it is material to patentability. However, some courts hold that information is material only if the USPTO would not have issued a patent had the information been presented to the USPTO. Information found in patent searches is always disclosed. Failure to do so would certainly invite an inequitable conduct argument against a patentee trying to sue someone for infringement, which could lead to the patent being held invalid or unenforceable. Information which runs counter to an argument of patentability that the applicant makes is also considered material to patentability.

The duty of candor and good faith applies not just to applicants, but to anyone involved in the preparation and prosecution of the application. The duty begins with the submission of a patent application and continues as long as the application, or continuation-in-part applications, are pending before the USPTO. That means if the applicant becomes aware of new information during the prosecution of the patent application, he or she must disclose it if it is material to patentability.

There is no duty to disclose information which is not relevant or material to patentability. The duty to disclose is satisfied if all information known to be material to the patentability of any claim is cited by the USPTO or disclosed by the applicant or the applicant’s attorney.

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Disclaimers in Trademark Office Actions

Posted on October 4, 2011 by tom

Disclaimers are a frequently raised issue by the Trademark Office.  I see such rejections most often when a mark owner files the application himself and includes too much material in the mark, but they do occasionally arise when a trademark attorney files the application as well.  Whoever files the application, disclaimers are common.  Let’s say I run a diner here in Phoenix, and I want to register my diner’s name as a trademark.  I submit an application for the mark TOM’S DINER.  Whoops, I am definitely going to get a requirement to disclaim any rights in the word DINER apart from my larger mark.

A disclaimer is properly required anytime there is a separately unregistrable portion of a mark.  Frequently, the Trademark Office will require that a disclaimer be made because a portion of the mark is merely descriptive.  In the above example, DINER simply describes what Tom’s Diner is, so it may not add any distinctive aspect to the mark.  You certainly couldn’t get a trademark on the word DINER in connection with diner services, so the Trademark Office will require you to disclaim any right in that word apart from your greater mark.

Not all disclaimer requirements should be given in to.  The requirements are sometimes wrong.  For instance, if the alleged descriptive portion of the mark is used in a distinctive way, it shouldn’t be disclaimed.  Or, if the alleged descriptive portion of the mark isn’t actually descriptive (perhaps the word has several different meanings, only one of which is descriptive), then it shouldn’t be disclaimed.  Many other reasons for not disclaiming exist.

If the disclaimer is inappropriate, it may or may not be worth the argument.  If, for example, the Trademark Office makes a disclaimer requirement and then also informs you that your mark is confusingly similar to another mark, based on the non-disclaimed portions, you may want to try to argue that the word should not be disclaimed.  It is improper for the Trademark Office to consider the non-disclaimed portions of a mark only, but it still happens.  While the Trademark Office should consider the mark as a whole (though it give greater weight to the non-disclaimed portion), arguing that no part of your mark should be disclaimed can add strength to an argument against over the likelihood-of-confusion rejection.

While it is frequently recommended to not include unregistrable portions of the mark, there may be reasons that you want to register material that will have to be disclaimed anyway.  If, for example, your whole name (TOM’S DINER) has garnered recognition and you think its value is as a whole, rather than as just TOM’S.  Or, perhaps there are a number of other marks for TOM’S, and you think that adding DINER will help distinguish your application.  There can be other reasons as well.

You should contact a trademark attorney if you have received an Office Action that requires a disclaimer.  While often times the disclaimer is appropriate, there may be very strategic reasons to disclaim or not disclaim portions of your mark.

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America Invents Act Online Guide

Posted on September 27, 2011 by tom

I’ve already received many calls from clients about the American Invents Act.  For those who want an online reference, the USPTO has created a site that contains some very basic information about the changes it will bring.  Some of those changes, such as patent fees, went into effect yesterday.  Others will fall into place over the next 18 months.  The site does include a timeline that shows some major highlights in the coming year.

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Patent Reform

Posted on September 13, 2011 by tom

You may have heard that a patent reform bill was recently passed by Congress reforming the way our patent system runs.  If signed by the President, it will bring the largest changes to the patent system in over a hundred years.

Some of the changes:

First Inventor to File: The US currently uses a first-to-invent patent system.  That is, in the US, only the first person to invent a product can obtain a patent on it.  The rest of the world uses a first-to-file system, or more properly, a first-inventor-to-file system.  This bill brings the US in line with the rest of the world.  Now, a person who invents a product second can obtain a patent if he beats the first inventor to the patent office.  This poses some risk for independent inventors.  Large companies have divisions dedicated to patenting internal inventions.  By keeping everything in-house, they can develop an invention and file a patent on it very quickly.  In contrast, most independent inventors take time to file patent applications – they come up with an idea, think about it, develop it, look for a patent attorney, hire the patent attorney, discuss the invention with the patent attorney, and then hand over the disclosure to the patent attorney so that he can write the application and prepare it for filing.  The new law gives larger companies the upper hand.  That means inventors can’t sit on applications anymore – they will have to file quickly, or file provisional applications soon after conception of the invention.  But it doesn’t mean that someone can steal your invention and file a patent on it.  The law will require that the applicant be a true inventor, not a thief.  That is why it is called a first-inventor-to-file system.

Filing Fees: In addition to the already existing “Large” and “Small” entity statuses, the bill creates a “Micro” category, which will pay half the fees that a small entity pays, which are already half the fees that large entities pay.  This would mean, with today’s filing fees, micro entities would pay about $231 to file a non-provisional patent application.  Fees are expected to go up immediately for most inventors.  10 days after the law goes into effect, the government will charge a 15% surcharge on fees.  So if you are considering filing, file soon.

Prior Use Rights: In some situations, disclosing before filing can create some presumptive rights.  If someone accuses you of infringing their patent, and you can point to a disclosure made within one year before their patent application filing date.  But not all prior disclosures count, and some can waive your US and foreign rights.  Be careful and talk with an attorney.

Expedited Examination: If you don’t have some other basis for expediting examination, you can now request that your patent application be given priority with, essentially, a bribe.  An extra $4,800 governmental filing fee buys you into an accelerated examination track that could provide a final examination within 12 months, rather than the more typical 2-4 years.  It will have to be seen what effect this has on the backlog of non-prioritized applications.

Humans: No claims will be granted “directed to or encompassing a human organism.”  This language is bound to create a huge amount of litigation.

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Should I use LegalZoom for my Trademark Application?

Posted on September 12, 2011 by tom

Trademark applications mature into trademark registrations and can be very important and valuable assets for a business.  Anyone can file a trademark application, and most people can successfully “register” a trademark.  However, the value of a DIY trademark is dubious, and, more importantly, its value usually isn’t called into question until just when you need it.

I’ve had clients call me before and ask me whether they can file a trademark application themselves or whether they should use LegalZoom for help.  I don’t like to tell people to use or not use LegalZoom, but there are some factors to consider.  First, services like LegalZoom are not attorney services.  Attorneys provide guidance.  One of our chief functions is that of counselor: we provide advice professionally.  When a trademark client hires me, we often spend a lot of time just talking about the mark itself: how it was picked, how it is being used, how long it has been used, the kind of power it commands with customers, whether they have other marks they are using or are considering using, whether those marks should be registered or not, how to develop new marks and build new branding.  Lots of topics.  And I give out advice when we talk about these things.  LegalZoom doesn’t give advice (they acknowledge it) – they take input, namely, the input you provide to them, whether right or wrong.  LegalZoom does spellcheck your application, but you aren’t too likely to misspell your mark or your name, right?

Hiring an attorney to file a trademark application is generally not very expensive, especially when compared with the value that a properly-filed and maintained trademark registration provides.  Most trademark attorneys charge a flat rate to file an application, so you can know and control your budget.  Granted, LegalZoom is almost certainly cheaper, but the difference isn’t much – perhaps a few hundred dollars.  That hundred dollars should buy you many things: a correctly-filed application, peace of mind it was done properly, advice when you need it, someone to watch and remind you of maintenance fees required on the registration, and a host of other things.

I sometimes take on cases that I haven’t filed originally.  Sometimes, clients make careless mistakes in filing the application themselves.  Totally forgivable.  Sometimes, the client gets an Office Action and doesn’t know what to do with it.  Totally understandable.  Sometimes, the client has butchered an application and we have to start all over.  I hate to see these cases because I know the client is now spending more money (and time) than had he or she just come to talk to me in the first place.

I’ll draw an analogy to electrical wiring.  Anybody can connect a light fixture and a junction box with some Romex.  That doesn’t mean the lights will come on.  Many people can do it and yes, provide power to the light so that it turns on.  That doesn’t mean the house won’t burn down.  Only some people can do it to code with the assurance that the lights will stay on and the house will stay standing.  If you’re not one of those people – or if you can’t say that you know what you are doing – stay away from the electrical.  The lights may never come on.  Or they may work fine right up until the point that they don’t – they come on, but someday the insulation catches fires.  At that point, you’ll wish you had hired the master electrician for $250 to do it.

And that’s the deal with trademark applications – they work until they don’t.  You’ll have a false sense of security (or it may keep you up at night) unless you get the advice of a trademark attorney.  As someone on the net said, and I apologize because I can’t find the source: “filling in blanks in a form is easy, doing it properly is another matter entirely.”

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First to File Risks to Individual Inventors

Posted on August 31, 2011 by tom

David Abrams and Dennis Crouch have published a comparative study on the switch from a first-to-invent system to a first-to-file system in Canada and applied the analysis to the potential change to the US patent system by the America Invents Act.  Read it here.  It posits that a reduction in patent activity by small inventors is likely.

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Sampled “Success” Rates of Patent Applications, Courtesy Patently-O

Posted on August 9, 2011 by tom

Patently-O did a brief post yesterday on a selected group of patent applications to see how the applications have proceeded through the PTO.  Of the applications filed in February 2006, 57% have matured into a patent, 28% are abandoned, and 15% remain pending.  Five and a half years is a long time to work through the Patent Office, but it may be that a large majority of that 15% are in a cramped technology field, one in which the Patent Office has a disproportionately large backlog.

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Dex Encourages you Dex It! and Obliterate their Trademark

Posted on July 28, 2011 by tom

This morning I saw a Dex commercial urging the viewer to “Dex it” when they needed to look something up.  Dex it?  Instead of Googling searching online for it?  Well, first off, I have opted-out of receiving most telephone books, because the time I spend bringing it back from the front of the driveway will likely be the longest it is ever in my hands, and I just can’t justify cutting a tree down, even for those wonderful 30 seconds.  So even if I wanted to “Dex it,” I couldn’t.

Secondly, what struck me most about the commercial was the message Dex was sending.  Essentially, “we are the go-to place to search for local information.”  So essential, it would seem, that you should just drop “look it up” from your everyday vocabulary and replace it with “dex.”  I imagine the marketing folks loved this one, and apparently they won the battle with the legal team, which I’m sure was telling the company what a horrible idea it was to use the company name in this way.  Or maybe legal knows what they’re doing.  What do I know.

Dex Media has a good number of registered trademarks – just over 40 live marks.  Almost every single one of them incorporates the word “dex”.  The plain-old, original DEX trademark was apparently first used back in 1997 and registered in 2002.  Now it appears that Dex is hoping to whittle away at the rights they’ve built up in their marks by encouraging the public to use it generically.

Typically, use of a trademark as anything other than an adjective weakens the rights in that mark.  Supplanting the mark for a noun or a verb in a sentence changes the mark’s meaning and its understanding.  When the mark is later accepted by the public as a noun (think cellophane or aspirin) it becomes generic, and the mark’s owner loses rights in it.

Interestingly, the company is attempting to use the phrase DEX IT! in a trademark sense.  On their website, they’ve applied a TM symbol to that phrase.  Perhaps they’re hoping that  by incorporating a trademark as a verb within a phrase in which they claim trademark rights, they can prevent genericide.  Regardless of Dex’s intent about how the mark is used, however, if the public understands and uses the word DEX as a verb, it loses its ability to function as a trademark.  And likewise, if the phrase DEX IT! begins to simply mean “search for it in a local telephone book,” as one might suspect if the word DEX becomes generic, the phrase will offer no protection, either.

Of course, all this depends somewhat on the public actually using the phrase DEX IT, which would in turn probably require the public to begin using the Yellow Pages telephone directory again…

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Ornamental and Fuctional Aspects in the Same Invention

Posted on July 22, 2011 by tom

My invention has both functional and ornamental aspects – can I file for both utility and design patent protection?

Absolutely.  Both aspects of the invention can be protected.  Some considerations (there will probably be others):

Timing: Ensure that both applications have the same filing date by submitting them at the same time.  It is easier to file them on the same day than to file them on different days, for legal and administrative reasons.

Provisional: Only a utility application benefit from an earlier-filed provisional application.  A design application cannot claim back to a provisional.  In other words, a provisional holds a spot in line for a non-provisional utility application, but not for a design application.  So again, consider the importance of timing.  Filing a provisional does not secure a filing date for eventual design patent rights, so disclosures made after a provisional is filed can be risky.  If you are going to file a provisional, file it on the same day as the design application.

Disclosure: Make sure that the scope of the design application and the utility application (whether provisional or non-provisional) are commensurate to each other.  While the design application is comprised of drawings showing ornamental parts of the invention and the utility application is comprised of description and drawings regarding the structure of the invention, the scope should be the same.  In other words, there should not be three embodiments in the design application that are not in the utility application, and vice versa.  You want to avoid dedicating anything to the public by disclosing it and not claiming it.

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