FREQUENTLY ASKED QUESTIONS
As with all areas of the law, we see the same questions pop up time after time and thought it might be helpful to provide answers to the trademark questions in one convenient and easy to find spot. If you have any additional questions you would like to see referenced on this page, please feel free to drop us an email. We always appreciate feedback and input.
Trademarks protect brands such as company or product names, logos, and distinctive coloring. Patents, on the other hand, protect inventions such as machines, processes, products and chemical compositions that are used to make or comprise a part of the product. Copyrights protect original works of authorship such as writings, computer programs, and works of art.
Let’s think of this in terms of an example – M&M’s® candies. Trademarks protect the M&M’s® brand name. Patents, on the other hand, protect the machine that can print images on M&M’S® candies and copyrights protect the written and graphic content on the M&M’s® website, such as the artwork for the M&M’s® characters.
Yes, there are three types of patents. Utility patents cover processes, machines, articles of manufacture, and compositions of matter. Design patents cover the ornamental design of an article of manufacture. Plant patents cover asexually reproduced varieties of plants.
Utility patents are by far the most common, and the remainder of the information set out below applies to utility patents. To obtain a utility patent on an invention, the invention must be useful, novel, and non-obvious over the prior art; this will be described in more detail below. (Prior art is any evidence, readily available or not, that your invention is already publicly known.)
Additionally, a provisional patent application may be filed as a placeholder for a utility patent application. A provisional patent application preserves a filing date with the U.S. Patent Office. A provisional patent application is not examined by the Patent Office and does not become a patent. Filing a provisional patent application does allow the patent applicant to mark their described products “patent pending” but does not allow enforcement of patent rights against infringers.
Within 12 months of the filing date of the provisional application term, a non-provisional utility patent application may be filed based on the provisional application. The non-provisional utility patent application is examined by the U.S. Patent Office, and if issued as a patent, may be enforced against infringers. Again, once the non-provisional utility patent application is filed, the patent applicant may mark their described products as “patent pending” but patent rights cannot be enforced against infringers until a patent is issued.
A US patent allows an inventor to exclude others from making, using, selling, or offering for sale the patented invention in the US, or importing the invention into the US, for a limited time in exchange for public disclosure of the invention when the patent is granted.
Patent prosecution is the process of negotiating with the United States Patent Office (USPTO) in an attempt to obtain a patent on an invention. Patent prosecution is not the same as patent litigation; patent litigation refers to legal proceedings regarding the infringement of a patent once it is issued.
An examiner at the USPTO specializing in the type of invention for which a patent is being sought will review the patent application and determine whether the invention is useful, novel, and non-obvious over the prior art. The examiner will search to find any prior art—any type of publication or disclosure, including both patent and non-patent literature—that discloses all or part of the invention. If the examiner finds any prior art, he or she will issue an Office Action in which the application is objected to or rejected. The applicant or his or her representative will have an opportunity to respond to any objections or rejections contained in the Office Action. The patent claims may be redrafted; if changes are made to the claims, the changes are called Amendments.
The examiner may continue to reject the claims or may come up with new grounds for objection or rejection and may issue subsequent Office Actions. At a certain point in prosecution, the examiner may issue a Final Office Action, after which options are limited, but do exist.
If the examiner finds that the claims are patentable, a Notice of Allowance is issued. After payment of Issue and Publication fees, a patent will be issued, and the inventor may begin the process of enforcing his or her patent. Even then, the process does not stop entirely. Maintenance fees are periodically due.
From beginning to end—from the initial interview with a law firm through filing the patent application to addressing the Patent and Trademark Office’s objections to obtaining the issued patent—the process takes approximately 48 months on average.
On average, based on survey data from the American Intellectual Property Law Association (AIPLA), the total fees and costs to prepare a patent application for a relatively complex single invention and to address a moderate number of PTO rejections is approximately $20,000. In certain circumstances and depending upon the type and number of new inventions within a particular technology, the total fees and costs to prepare and obtain a patent will exceed $20,000. In these circumstances, we will endeavor to provide a strategy and an estimated budget.
Nationwide, historically, and without regard to whether or not Dunlap Codding has represented the applicant, the rate of success is approximately 60%. For every 10 patents applied for, 6 are granted.
Yes. We require fees and costs for all services to be paid in full prior to beginning any work on a client’s behalf. We will provide a quote for the cost of the services to be provided during an initial consultation.
Yes, we charge $250 for an initial consultation which typically takes 45 minutes to an hour. During the consultation, we offer guidance and counsel after spending time with you to discuss your invention as well as your goals and strategy.
No, but we can provide our clients with information about companies and organizations that help inventors find investors.
No, but we can provide clients with information about companies and organizations that help inventors market and commercialize their inventions.
After clients have found potential licensees, we help them structure, negotiate, and document the terms of agreement.
The USPTO offers an abundance of information on its website:
http://www.uspto.gov/patents/process/index.jsp
http://www.uspto.gov/faq/patents.jsp
Wikipedia also offers excellent articles on intellectual property, patents, the patent application process, and patent prosecution at www.wikipedia.org (enter search terms to locate the articles).
At Dunlap Codding we pride ourselves on being client friendly. We strive to be responsive to clients, quickly. We work hard to explain complex intellectual property issues in plain English. We do our best to provide customized, cost-effective service, investing our time and resources to develop a deep understanding of our client’s technologies and business. Most of all, we strive to be cordial to our clients and respectful of their time and their invention.
In return, we expect the following from our clients:
- Civility and respect—we will offer the same to you
- Timeliness—be on time for appointments and reply to our requests for information promptly
- Prompt payment of fees and costs for non-retainer work
- An understanding that we will keep your ideas and our dealings with you confidential
A trademark attorney can assist your efforts in selecting a trademark by researching and analyzing similar trademarks in order to reduce the risk of adopting a mark that is in use by someone else. A trademark attorney can also assist in the legal steps necessary to obtain state, federal, and international trademark registrations for your company’s name, logos, product names, slogans, and the like. Management and oversight of your trademark portfolio is necessary in order to “police” your mark against infringers. Setting up trademark monitoring services is an important first step. Once an infringer is found, a trademark attorney can facilitate the enforcement of your trademark rights by sending cease and desist letters and, in some instances, filing lawsuits against third parties to stop their use of the mark and collect damages.
Rights in a name are generally established by being the first to use the name in connection with a product or service. As such, it is a good rule of thumb to “test the water before jumping in.” Before you invest too much in marketing and branding for your business, it is recommended that a trademark search be conducted by an attorney to determine whether your proposed name is fit to enter the marketplace.
A thorough trademark search involves an extensive search of a variety of resources, including United States Patent and Trademark Office records, industry directories, trade journals, the Internet, and domain name databases. With the results of the trademark search in hand, you may make an informed decision as to whether your proposed name is available for your use. Without the information provided by a trademark search, you risk adopting a trademark that is susceptible to a claim of infringement, and all that comes along with such a claim, including the possibility of having to change your name after having already invested a significant amount of time and money.
Nearly all companies have intellectual property assets of some form, whether they know it or not. Such intellectual property assets may include patents, trademarks, copyrights and trade secrets. Although patents themselves, for example, remain a boring and dry subject, (read one and see for yourself) by protecting innovations and by giving patent owners the exclusive right to practice the invention, patents can be of great importance and value to any company. Nevertheless, many companies have not used the inherent wealth producing potential of intellectual property effectively due to the fact that much of the value of intellectual property is often simply ignored or forgotten. Intellectual property is an asset, and can often be a valuable one, but companies must have a strategy in place for properly utilizing it. Given the diversity of types of intellectual property, and the varied circumstances surrounding its creation, an intellectual property audit is often a beneficial first step in any intellectual property strategy, allowing companies to identify and utilize forgotten assets.
Absolutely. Generally, it is a good idea to select a mark that is different from other marks in your industry. For example, APPEL as a mark for computer accessories would be a poor choice because it is similar to and would likely be confused with APPLE® computers.
Start by generating a list of several marks. Write down every mark that comes to mind. Try to think of a few that are completely unrelated to your products or services, for example, BLUE DIAMOND® for nuts or XEROX® for photocopiers. After narrowing your list down to a select few, it is recommended that you consult an attorney to conduct a trademark search to determine whether your proposed marks are available for use in the marketplace.
To prevent others from using your trademark anywhere in the United States, you should federally register your trademark. Although “common law” trademark rights are created just by using a mark, these rights are generally limited to the geographic areas in which the mark is being used.
Consider this example. Robert opens up a hot dog stand in Oklahoma City called HOT DIGGITY DOGS™. Carrie later opens up a hot dog stand in Edmond called HOT DIGGITY DAWGS™. Since both hot dog stands are in the same geographic area, Robert could sue Carrie for trademark infringement if consumers are likely to confuse HOT DIGGITY DOGS™ with HOT DIGGITY DAWGS™. Without a federal trademark registration, however, Robert may not be able to prevent someone from using a similar mark in a market he has not yet entered, such as Dallas or New York City. Thus, Robert should obtain a federal registration to obtain priority to the trademark throughout the United States.
It has been estimated that the average resident of the United States encounters approximately 1,500 different trademarks each day and 30,000 after a visit to the supermarket. Just imagine how many trademarks the average resident encounters during the holiday season as the level of shopping and advertising increases – these numbers could double or even triple!
This is why selecting and protecting a unique trademark is so important. A unique trademark helps consumers recognize and distinguish your brand from thousands of others.
So, while you are out finishing up some last minute holiday shopping, try counting the number of trademarks you see. You might be surprised to find out just how many you encounter. Take note of the trademarks to which you are drawn to the most. Are they unique?
A federal trademark registration is one of the cornerstones of brand protection. A federal trademark registration provides several benefits that can be invaluable in a competitive marketplace. For example, a federal trademark registration (unlike a state registration) provides nationwide protection, even if you are not using a trademark everywhere in the United States. In addition, a federal trademark registration provides notice to the public of your claim of ownership in a trademark, allows a lawsuit for trademark infringement to be brought in federal court, and provides means for preventing infringing and counterfeit goods from being imported into the United States.
Two basic steps that should be taken to protect your trademark rights are (1) use your trademark properly and (2) instruct third parties how to properly use your trademark. Proper trademark usage is essential to maintaining trademark rights and in acquiring new trademark rights. Proper trademark usage includes the use of appropriate markings (e.g., ® or TM) and proper grammatical usage of the trademark (e.g., use as adjective, not as noun). Also, trademark owners have an obligation to police the use of their trademarks to ensure their trademarks are used appropriately. Policing your trademarks may include educating third parties as to proper trademark usage and correcting third parties (such as the news media) who may incorrectly use your trademarks.
Receiving phone calls or e-mails from individuals who have confused your company with the other company is a good indication that trademark infringement exists. Generally, trademark infringement arises when one person or company uses a name for its product or service that is identical or very similar to another. For example, after the recent storms in the metro area, an out of town roofing company came to this market and used the same name as an existing Oklahoma roofing company. Those affected by the storms were unable to distinguish the two roofing companies. The company recognized the problem and contacted an attorney and the matter was resolved shortly thereafter.
Your company’s reputation is vital to its success. If your company’s reputation is affected by the actions of another company, consider contacting an attorney specializing in trademark law to discuss your potential remedies.
No, if the work is protected by intellectual property rights, e.g., patent, trademark, copyright, or trade secret. However, works not protected by intellectual property rights are part of the public domain and are free to be copied.
Determining whether something is protected by intellectual property rights is not always simple. For example, products purported to be protected by a patent may not actually be covered by a patent, or if a product is covered by a patent, the protection may be very narrow in scope. Trademarks you may want to use, even though similar to someone else’s marks might be allowable if the goods and/or services provided under the two marks are sufficiently unrelated (e.g. DELTA faucets and DELTA airlines). On the other hand, certain works are protected by very broad intellectual property rights to the point that attempting to copy these works will inevitably subject you to a lawsuit for infringement.
In the end, an experienced intellectual property attorney can help you create defensive strategies to avoid illegally copying works that are protected by intellectual property rights, as well as offensive strategies to protect your own intellectual property rights.
United States Copyright law protects “original works of authorship,” which is to say that it protects the original and creative work of makers and creators, jewelry designers included. Generally, the moment an original work is created, copyright protection vests in that work. In other words, the moment you create an original piece of jewelry or jewelry design, you own the copyright to that piece of jewelry and/or design. As the owner of a copyrighted work, you have the right to:
- Reproduce the work;
- claim rights to similar works based off your work;
- distribute copies of the work;
- sell copies of the work;
- transfer ownership of the work; and
- display the work publicly.
Because copyright vests upon creation, individuals, as well as businesses, are eligible for copyright protection in their original work. There is no requirement that a creator must be associated with a formal business entity to claim a copyright to his/her original work.
A U.S. Copyright registration does not earn a copyright owner rights in and of itself. A registration will however, enhance copyright rights by giving the copyright owner access to federal courts and enhanced damages, as well provide a clear cut document to prove ownership.
Effective enforcement of copyright is largely up to the copyright owner. A strong deterrent to potential copycats is to put the public on notice of your copyright rights. Copyright owners can do this by listing a copyright disclaimer on their websites and marketing materials. If you suspect someone has copied your work, however, it is best to seek the counsel of a copyright attorney before reaching out to the potential copycat. Depending on the circumstances surrounding the copying there are various levels of action that can be taken to approach and amend the problem.