Frequently Asked Questions
Intellectual property refers to creations of the mind and includes: 💡 - Inventions and designs (patents), ™️ - Symbols, names and images used in commerce (trademarks). 🎼 - Literary and artistic works (copyrights), and 🤫 - Secret information that cannot be reverse engineered (trade secrets). IP law provides property rights for these creations that operate much like real property rights and enable creators to earn recognition and/or financial benefit from what they invent or create. The goal in providing property rights for IP is to foster creativity and innovation by striking a balance between the interests of innovators and the wider public interest.
A trademarks identifies the source of goods or services. Your company name, logo, and slogan are the most common marketing tools most used to create an impression in the consumer’s mind (hopefully positive!) about what they can expect when they open that can or bottle or box they just purchased or choose you as their plumber or painter or grower. Did you know that colors, shapes, sounds, and scents can also be protected? Think Tiffany blue! Anything that distinguishes the goods or services of your company from another could potentially be eligible for trademark protection.
The first thing you should know about the timing of seeking protection for a trademark is it is possible to file a federal trademark application on an intent-to-use basis BEFORE you are using the mark in commerce. Imagine putting so much time and money into developing your brand and gaining loyal customers and recognition only to be told when you finally decide to seek trademark protection that the mark is already registered or is “confusingly similar” to a mark already registered. Or imagine finding out that while someone else hasn’t registered the mark, they do have “territorial rights” that will need to be somehow carved out of your rights. And everyone has heard of someone receiving a cease-and-desist letter. We wish it was an uncommon occurrence that we meet with a new client who is years into developing a brand and who now has to either rebrand their entire business or fork over enough money to defend an infringement suit. This can be avoided by properly vetting a new mark and seeking trademark protection BEFORE developing the brand.
NO. This is a very common misunderstanding. You’ve registered your DBA, formed your LLC, bought your domain name, obtained social media handles, etc. Your business name is available for you to use throughout the U.S. and no one else can use it, right? Unfortunately, NO. DBA's are registered only at the state level and is separate from registering your business name as a trademark. If you never intend to expand your business into other states, relying only on a DBA and common law trademark rights may work for you. However, if you intend to grow your business and use your mark beyond the state in which you registered your DBA, including having a website that would offer your goods or services outside that state, you will want to make sure your name does not infringe on an existing trademark and seek federal protection. The only way to federally register your trademark and protect your brand on a national level is through the U.S. Patent and Trademark Office.
We strongly recommend that you have a trademark attorney run a comprehensive trademark search for your mark before you invest time and money building your brand. Even if you’ve searched it yourself using google or the trademark office search tools, there is still a lot that can be missed. For example, did you know the basic trademark office search tool only searches for EXACT matches? Try misspelling a mark you know is registered and see if you find the mark. Add in the fact that exact matches are not the only marks you need worry about but also those that are “confusingly similar.” What is that? See the next question.
A comprehensive search looks for variations of your mark that might be considered "confusingly similar" as well as state and common law usage of the mark you want to register. Performing a comprehensive search for your mark before moving forward with it avoids potential problems down the line such as inadvertent trademark infringement or inability to obtain a trademark registration that could cause you to have to rebrand.
There are 8 factors used in determining whether a mark is confusingly similar to another, the first 3 of which are most often discussed: 1. Strength of the mark -- Many people mistakenly believe that a "strong" mark is one everyone is going to want to use. Actually, marks are placed in one of the following 5 categories in order of strongest to weakest: Fanciful (made up words), Arbitrary (think BANANAS for toasters), suggestive (the mark suggests the goods or services), descriptive (the mark describes the goods or services), and generic, which are not protectable (think bandage for bandages). 2. Similarity of the goods or services -- Examiners look not only at the class of goods or services but also compare the descriptions of the goods and services. 3. Similarity of the mark -- Examiners look at sight, sound, and meaning. Thus, changing a "c" to a "k" or an "i" to a "y" would result in the same or similar sound (phonetic equivalents), and common foreign language terms (e.g., agua for water) will be translated into English for evaluation.
US trademark laws can be complicated and confusing. For example, most people are aware that you cannot use an existing mark on the same goods or services. Did you also know you cannot use a mark that is "confusingly similar" to an existing trademark? Hundreds of thousands of applications get filed a year, and many of them get rejected. Using an attorney to help you can provide several clear advantages, including, obtaining registration more quickly by avoiding common mistakes, obtaining stronger protection in how the goods or services are described, taking future directions for your mark into consideration, performing a trademark search to avoid wasting money applying for marks that are not available for regisration, and more.
The ® symbol means the mark is REGISTERED with the governing body of the country in which the mark is being used. Use of the ® symbol is reserved exclusively for marks that are registered. It is typically placed to the right of the trademark, superscripted, and in a smaller size than the mark itself. The rules for use of the ® symbol vary from country to country, e.g., whether its use is required, whether its use has any meaning, or whether the ® symbol may remain when goods are imported into a country where the mark is not registered. Using the ® symbol incorrectly can have significant consequences, and using the ® symbol before the registration of the trademark is illegal.
In some cases, the TM symbol does not mean you have any trademark rights at all. It’s true! The TM symbol is a very common source of confusion and we’ve heard many explanations for what people THINK it indicates. The TM symbol serves to indicate that the mark it modifies is being used as a trademark in that context. It gives notice to the public of possible rights in the mark provided, of course, that the mark actually is protectable under trademark law at either the federal, state, or common law level. The TM symbol can be used any time you wish to claim common-law rights in a trademark and/or want to put the public on notice that the mark is being claimed as a trademark. However, the use of the TM symbol does NOT mean or guarantee that the mark is actually afforded any protection under trademark laws nor does it mean a federal or state trademark application for the mark is pending or issued.
The SM symbol means “Service Mark” and is similar to the TM symbol in that it is used to indicate that the mark it modifies is being used as a trademark in that context. The SM symbol is used for services, such as legal services, where the TM symbol is for goods.
As with use of the TM symbol, use of the SM symbol provides the public with notice of possible rights in the mark provided that the mark actually is protectable under trademark law at either the federal, state, or common law level.
However, use of the SM symbol does NOT mean or guarantee that the mark is actually afforded any protection under trademark laws nor does it mean a federal or state trademark application for the mark is pending or issued.
Ideally a patent application should be filed BEFORE public disclosure of the invention. There is a grace period that allows for pre-filing disclosures of the invention, but it is limited to 1 year and it is generally not advisable to rely on the grace period. This is because the U.S. patent system is a first-to-file system. That means, even if you invented first, if someone else files first, that patent application will be prior art to any subsequently filed patent application.
In deciding when you are ready to file for patent protection, it is important to note that an inventor need only have "conceived of" the invention in his or her mind and be able to describe the invention in sufficient detail to enable others to make and use the invention. Thus, it is not necessary to have a "prototype" or working version of the invention prior to filing.
First, the invention must be patentable subject matter: processes, machines, manufactures and compositions of matter, and must not be directed to a judicial exception--subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention. The judicial exceptions are abstract ideas, laws of nature and natural phenomena (including products of nature).
Next, the invention must be both NEW and NON-OBVIOUS over the prior art for the patent to be valid.
Finally, the claimed invention must be sufficienly described such that the disclosure enables a person of ordinary skill in the art to make and use the invention.
In the U.S. there are three types of patents: Utility: may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; Design: may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and Plant: may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Plant patents are available from the USPTO for asexually reproduced (e.g., by cuttings, grafting and budding) plant varieties, which are not tubers. A patented plant must differ from known plants by at least one distinguishing characteristic which is more than that caused by different growing conditions or fertility. A plant patent allows the owner to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the U.S., or from importing the plant so reproduced, or any part thereof, into the U.S.
For new varieties of seeds and tubers, the Plant Variety Protection Office (PVPO) provides intellectual property under the Plant Variety Protection Act. The PVPO examines new applications and grants certificates that protect varieties for 20 years (25 years for vines and trees). Certificate owners have rights to exclude others from marketing and selling their varieties, manage the use of their varieties by other breeders, and enjoy legal protection of their work. Finally, traditional utility patents are available from the USPTO for plant-related inventions, which in some cases can cover plant varieties regardless of how propagated.
The patent system seeks to foster innovation by providing a limited monopoly in exchange for public disclosure that would enable others to make and use the invention. Thus, the public disclosure must enable others to make and use, and thereby improve upon, the invention and in exchange for the disclosure, the inventor is allowed a time-limited monopoly during which he or she CAN (doesn't have to) prevent others from competing in the marketplace.
What is counterintuitive and key in understanding the role of patents in fostering innovation is that inventions that are not protected by patent tend not to be developed commercially. This is because investors generally will not invest their time, money and talent into developing an idea into a commercial product unless there is some way for the investors to benefit from their investment. This is accomplished with a period of exclusivity during which the investors can recoup their investment.
This is a trick question. While a patent affords the right to exclude others from practicing your claimed invention, it does not necessarily afford the right to practice your own claimed invention. This is because to practice your claimed invention you must not infringe anyone else's patent.
Let's say you have invented a new and non-obvious widget. Obtaining a patent grant on your new widget does not give you the right to infringe on existing and valid patents for the unimproved widget in making and selling your improved one. This is where patent licensing comes in.
A copyright is a form of intellectual property protection that applies to original works of authorship such as books, songs, movies, photographs, and computer software. Copyright owners have six exclusive rights in relation to their copyrighted work. These include the right to reproduce the work, prepare derivative works, distribute copies of the work, perform the work publicly (as applicable), display the work publicly (as applicable), and publicly perform the work by means of digital audio transmission (as applicable). Copyrights may be registered through the application process with the United States Copyright Office.
Copyright protection begins the moment the work is "fixed in a tangible medium," which means the moment it was written, recorded, videotaped, etc. Copyright registration with the United States Copyright Office offers additional protections beyond the rights the author has by simply creating the work.