How Important are Trademarks for your New Business?

New businesses generally have limited overhead and therefore it is essential to evaluate whether it is important to acquire a trademark at an early stage.

One of the key advantages to registering a trademark is that you gain federal protection, therefore anyone in the United States is put on notice to your use, and another party using a similar or confusingly similar mark may be liable for trademark infringement. This can be a powerful tool in protecting your brand name and ensuring your market share.

Remember that a business name alone does not give you exclusive rights or ownership to that mark. Neither does it prevent copy cats from utilizing the same name and therefore, potentially eating up some of your market share. Utilizing a business name over the years may provide you with common law rights, however protecting a business or brand name without registering is likely to be much more difficult and expensive to defend in the long run. Furthermore, common law rights are nowhere as strong as obtaining the federal protection that registration of a trademark grants.

A trademark gives your business an identity or a brand. You will have exclusive rights to the commercial use, license or sale of your business name or trademark. Furthermore, once registered a trademark right can carry on indefinitely, as long as the maintenance requirements are met. Moreover, registering a mark helps establish validity, provide notice of your rights to others, provide an additional business asset for sale or financing, increasing the strength of the mark and this in turn increases the value of your IP portfolio.

Another advantage of registering a trademark is the ability for the mark to become incontestable. After 5 years of unopposed registration, the trademark becomes incontestable. What this means is that it can not be attacked on the ground of being merely descriptive-and therefore, ineligible for registration. As such, moving to register trademark design and other elements is generally a good business decision.

If you have questions about getting your trademarks registered, feel free to get in touch. We have successfully filed and acquired many trademarks and can easily assist you with your needs.

Do it yourself (DIY) Patents

Many a times I have come across inventors who believe they have the necessary skill sets to write and prosecute their own patent applications after reading patent-it-your-self guides. After all, most patent attorneys were once engineers themselves, hence no reason for a bright engineer to not go ahead and file the application himself. Also, who better understands the invention besides the inventor himself, right?

Well-usually not. The important thing to consider are details in a patent application. In many instances a patent prosecutor must not only have the technical skill set but also the legal back ground. Any errors and omissions can count heavily against you and make the difference between getting a granted application or refusal upon refusal in the prosecution stage.

Furthermore, the most important focus on any application is upon the claim set. The claims are where a patent’s protection comes from. Claims that are too narrow may be worthless, whereas, claims that are too broad may infringe on other patents. Patent claims are one of the most essential element of any application, and – as being a hybrid of technical and legal language -- are significantly difficult to craft. It is an art mastered only after a great deal of experience, and only with a continuous monitoring of the ever-changing landscape of patent law. Experience in writing patent claims is a key difference between a good patent attorney and a DIY inventor.

From a legal stand point, as well as from an investor/competitor stand point, claims are heavily focused upon. The USPTO reviews the claims to determine novelty/non-obviousness. The courts look at claims to determine infringement. Potential investors look at claims when deciding whether the invention is worth investing into. Competitors looks at claims when deciding if their invention would be too similar.

Therefore, the next time you are thinking about drafting your own patent application, after reading a few DIY guides, remember that a little knowledge is never sufficient to become an expert. It is best to seek the guidance of someone practicing in/familiar with the field to attain the most favorable results. 

Contact us today for a 30-minute free consultation on how we can assist in fulfilling your patent needs.

Trademark the Business Name or Logo?

Trademarks protect brand names- things like your business name and your logo that you put on your products so that your customers can associate them with you. For a really big business, their brand is their business and the cost associated with registration is small in comparison. Hence, for a big company it is a no brainer to register all their branding- business name and logos included.

But smaller businesses are often working on a limited budget. So, many business owners decide that they want to limit their registration to a single trademark, and have to decide between registering their business name or their logo.

Registering Your Business Name

If, you have come to the conclusion, that you would only like one trademark registration, usually, I recommend registering your business name. A business name should be registered with standard marks, meaning that your registration covers your name regardless of the font and any stylistic or graphic elements used. This gives you broad protection and prevents an infringer from claiming no confusion would be likely because its mark uses a different font, etc.

Registering your business name with a standard character claim protects you against any use of the name, inside or outside of a logo or design. And for many businesses, their name is the most important aspect in need of protection. After all, your name is what identifies your business. And if your logo is minimalist, the other visual elements may not be that memorable anyway.

The downside of registering your business name alone is that it offers no protection for the design elements of your logo. You still may have common-law rights to your logo, but you would lack the important benefits of trademark registration. Another business could begin using a similar logo with a different business name, and you may not have many avenues to stop it from doing so.

Registering Your Logo

If instead you decide you would like your protect your logo, the advantage of registration is that it protects both the design elements of your logo and your business name (assuming that your logo incorporates your business name). However, there are many disadvantages.

Firstly, your protection for your name will be somewhat weakened. Another business seeking to register a logo with a similar name can argue, under the likelihood of confusion standard, that such confusion would not arise because of the stylistic/design differences between the two marks. Such an argument can succeed, particularly if your business name might be considered descriptive of the business you are in.

Another potential problem is that logos are fluid and can change over time. Even the largest corporations rebrand and modify their logos over time. One example would be Pepsi, that has rebranded their logo over the years. When your logo changes, your old logo trademark registration is not worth much. Now you have to file a new registration for your new logo. Your old registration, if it was in use for fiveyears, may have become incontestable, greatly strengthening it in legal disputes. Your new registration will not have the same protection.

For the above stated reasons, I usually recommend that my clients register their business names-if they only want to file one registration and cost is critical. An exception might be if their name could run into a conflict that their logo would have a better chance of avoiding, or if the design element of their logo is critical or especially distinctive. However, even if you really want to protect the design element of your logo, I would strongly suggest looking into registering both your logo and your business name. If you have any questions about the costs vs. benefits, please get in touch and our firm would be happy to answer them!

Trademark, Copyright or Patent Protection?

Some people confuse the three major types of Intellectual property protection. Although there may be some similarities between the types of protection, they are inherently different and serve different purposes.

Trademarks protect names, terms and symbols that are used to identify and distinguish the source of the goods and/or services on the market. In other words, trademarks let consumers distinguish one company's goods and services from another's. Examples of famous trademarks include brand names such as "Coca-Cola" and images such as Nike's famous "swoosh." Trademark protection is a federal protection and as the owner of a federally registered trademark, you can sue any infringers in federal court and prevent the importation of foreign or local goods, which display your trademark.

Trademark rights come from actual use, meaning a trademark can last forever, as long as you continue to use the mark on your particular goods or services. If a trademark has been registered with the USPTO, you can use the ® symbol next to your goods or services.

Copyrights protect original creative works such as movies, songs, books, paintings, photographs, architecture, web content and choreography. Copyright too is a federal protection, meaning, as the owner of a federally registered copyright, you can control how your work is reproduced, distributed and presented publicly, and you can sue infringers in federal court and prevent others from importing infringing goods.

Copyright protection duration depends upon who is applying for it.  For works created by an individual, protection lasts for the life of the author, plus 70 years.  For works created anonymously, pseudonymously, and for hire, protection lasts 95 years from the date of publication or 120 years from the date of creation, whichever is shorter.

Patents protect inventions. The various types of patentable inventions include machines, manufactured articles, industrial processes, and chemical compositions.  There are two different types of patents that can be granted for your invention: design and utility patents. A utility patent protects inventions with new or improved functions such as machines, processes or chemical compositions. A design patent, on the other hand, provides protection for any new ornamental design for an article of manufacture.  In other words, a design patent provides protection for the unique look of a functional item. A design patent does not protect the function of an invention, whereas a utility patent does. A few examples of design patent categories include jewelry, clothing, furniture, a beverage container, or even a computer icon. A famous design patent is Coca-Cola’s unique bottle shape.

The duration of patent protection depends upon the type of patent granted. For design patents, this duration is 15 years from issuance for applications filed on or after May 13, 2015 (14 years from issuance if filed before May 13, 2015)

Utility patents and plant patents - 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.

So next time you are wondering what the appropriate type of protection is for your creation, you can go through the above listed criteria to get a better understanding of the differences between various protections.



From an idea to a patentable invention

So you have an idea, and a great one too. Now what. Can you patent that idea? The short answer is no. However, be aware that an idea is a first critical step in moving towards attaining a patent. But first, you have to get the ball rolling and move from the idea to the invention stage-before you can work towards filing a patent. It is very essential for inventors to expand upon the idea and add a substantial amount of details describing the idea. This is because the USPTO requires that you describe your invention with specific and substantive details so that a person well versed in the art, or one with the same skill set, can not only understand the invention but also be able to replicate it-should they choose to do so. Thus you, as an inventor, may also want to describe all aspects and any alternatives associated with the invention, to help others better understand your concept. If however, you are stuck at the idea stage, you are not yet ready to file a patent application. Furthermore, you should also be wary of disclosing your idea to other people or companies, because these ideas, as such, are not legally protected and are free to be taken or usurped by others. Thus, try to get at least some meat and bones on your idea, so it takes the form of a more material invention. Then, if you would like to still determine the marketability of the invention, you can go ahead and file a provisional application, valid for a year from the date of filing, while you gauge if the invention is worth pursuing. But remember, an idea alone is never patent eligible. Only once you have something substantively looking like an invention, should you consider filing a patent application.

Prior Art Searches, yay or nay?

Some times my clients ask me, why not just forgo a prior art search and go straight to filing a patent application. It will save some money and they-the client-can deal with Office Action rejections when the time comes. I always suggest not to take this route. Why? Because not only does a prior art search turn up results of similar, or substantially similar art, it also gives you a good idea of whether it is worth the time/money and effort to invest in your invention. A prior art search should be an essential part of any patent strategy, before starting work on a patent application. With the world of patents becoming so saturated, there is a high likelihood of a similar, or substantially similar invention being out there, that may invalidate your chances of being granted a patent. Furthermore, a search also gives you a good idea if your invention, as it is, will be infringing on any granted patents.  Then, if need be, you can tweak and make improvements on your invention, so as to not infringe on an already existing patent. Therefore, before you invest the money and time in a patent application, invest that money in a prior art search to ensure your invention/idea is as unique as you think it is. This may save you from major disappointment later on.

Contact us today to assist with all your prior art search needs.