Intellectual Property, Copyright & Trademark FAQ
Do I need an intellectual property attorney based in my state?
- Not necessarily. Much of intellectual property law is based on the federal system and is therefore not state-specific. For example, some of my patent clients are based in other states and countries.
How can I protect my intellectual property (“IP”)?
- In the United States, you have four main ways to protect your IP: (1) Utility and Design Patents; (2) Trademarks; (3) Copyrights; and (4) Trade Secrets.
What is a trademark and what does it protect?
- A trademark is a name, phrase, logo, tagline, or other form of unique “source identifier” of your business (e.g., “McDonald’s,” or “I’m Lovin’ It,” or the Louboutin red bottoms of its shoes). Relatedly, “trade dress” is a type of trademark that is the collective “look and feel” of your business or product (e.g., the futuristic spaceship-esque white and glass interior of an Apple® store). A consumer seeing your trademark (or trade dress) should be able to trace that trademark back to you as a business.
- Because a trademark points back to you as a business, you have to use the mark in commerce in order to earn protection under U.S. law. (That said, you can strategically file for trademark protection as an “intent to use” application to get some protections – more on that below). If you have a valid trademark, you can prevent others from using your trademark in a manner that is “confusingly similar” to yours. See 15 U.S.C. §§ 1115, 1117, and 1125.
- Think of a trademark as an instrument to protect your business from others adopting a “confusingly similar” brand.
What’s the difference between an unregistered trademark and a federally-registered trademark?
- In most cases, your so-called “common law” trademark rights start when you start using your trademark “in commerce” in connection with your goods & services. This does not require a special filing at all. (The “common law” is the state-specific legal framework that has been created by courts and is not governed by federal statutes). The Lanham Act (15 U.S.C. § 1125(a)) provides that you can sue under these common law rights in federal court as well.
- A federal trademark registration gets you a slew of additional protections such as:
- Presumptive rights that your trademark is not descriptive
- Presumptive rights to assert your trademark across the United States (as compared to an unregistered trademark that only enables you to assert your trademark in states where you use the mark).
- Public notice of your claim of ownership of the mark;
- Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol “®” (as opposed to “TM” or “SM”)
- The use of the U.S. registration as a basis to obtain registration in foreign countries
How long do trademarks last?
- Your common law trademark rights last as long as you keep using the mark with your business. However, your federal trademark registration must be renewed at regular intervals.
When should I file for a trademark?
- As soon as you have a bona fide intent to use the trademark; or if you’ve been using the trademark in interstate commerce. Once you’ve already started using the mark, you can either file a trademark based on actual use, or you can amend your earlier-filed “intent to use” trademark application.
Someone is accusing me of infringing on their brand. What should I do?
- Consult with an intellectual property attorney with experience navigating trademark-related disputes. Sometimes a dispute can resolved quickly and efficiently when an experienced trademark practitioner gets involved early.
Someone is infringing on my brand. What should I do?
- You have several avenues that might be worth pursuing, depending on your goals, budget, and whether you satisfy other legal requirements:
- Send a cease and desist letter. This is typically the “opening volley” to get the discussions started. On its own, it does not have the ability to get you damages, but it puts the alleged infringer(s) on notice, which will be helpful if you need to prove willful infringement later on.
- Issue a complaint to Amazon.com (if applicable), the domain registrar (if applicable), or other third-party hosting sites like YouTube and the like. Each site has its own menus and requirements for issuing the complaint, and it’s certainly possible to handle without an attorney, but you should at minimum consult with an attorney before you start making legal accusations against anyone.
- Mediation or arbitration. If you are under a contract with the alleged infringer, you may be obligated to take your dispute to mediation or arbitration. The contract should state if an arbitration will be binding or not; and mediation is only binding to the extent that a settlement results from mediation.
- File a complaint in federal court. This is the most formal, heavy-handed approach. You need to meet certain jurisdictional requirements to file, but an experienced litigation attorney should be able to give you advice as to whether this option is available to you. This is the most heavy-handed and formal approach, and will result in the most enforceable resolution, but it is also subject to a wide variability in time-to-resolution and costs.
What does it mean when my trademark is “published for opposition”?
- A trademark is “published for opposition” when it meets all the formal applicable laws, rules, and regulations. If the examining attorney concludes that your application meets all legal requirements, the office will approve your trademark for publication.
- Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition.
How do I oppose someone’s trademark that recently published?
- The most direct way is to file a “Notice of Opposition.” The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board for filing an opposition.
Someone has filed a trademark in the U.S. Patent and Trademark Office that infringes my brand. What can I do?
- You should consider sending a cease-and-desist letter, filing a “Petition to Cancel,” filing a “Notice of Opposition”, or simply contacting the registrant with other less formal means.
- A Notice of Opposition should be considered while the trademark is in the “publish for opposition” phase.
- A Petition to Cancel can be filed within five years of the registration of the mark under 15 U.S.C. § 1064: “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this Act…” Basically, to file a Petition to Cancel with the TTAB, one must state the his/her interest in the case, the cause to action of the case (why the mark deserves to be canceled) and pay the required fee.
- Again, sometimes less-formal means of contacting the alleged infringer is the way to go. You may telegraph your position sooner than you need to do so, but you could avoid some legal fees if you start with a conversation.
What is a trade secret and what does it protect?
- A trade secret is information that (1) the owner has taken “reasonable measures” to keep secret; and (2) derives actual or potential independent economic value, because it is secret; and (3) it is not being readily ascertainable through proper means. If you can demonstrate that your information fits these requirements, you can prevent others from acquiring or disclosing your trade secret by “improper means.” See 18 U.S.C. §§ 1836 and 1839.
How long do trade secrets last?
- I’m not telling. It’s a trade secret. But seriously, trade secrets last as long as they meet the definition. (i.e. (1) the owner has taken “reasonable measures” to keep secret; and (2) derives actual or potential independent economic value, because it is secret; and (3) it is not being readily ascertainable through proper means.).
What is a utility patent and what does it protect?
- A utility patent is the U.S. Government’s grant to an inventor (or someone in the inventor’s shoes) the right to exclude others from making, using, selling, or offering to sell a claimed “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101
- Think of a utility patent giving you a monopoly over what your invention does and/or how it does it.
What is a design patent and what does it protect?
- A design patent is the U.S. Government’s grant to an inventor (or someone in the inventor’s shoes) the right to exclude others from making, using, selling, or offering to sell a “claimed any new, original, and ornamental design for an article of manufacture.” 35 U.S.C. § 171; see also 35 U.S.C. § 271
- Think of a design patent giving you a monopoly over what your invention looks like, not how it functions.
When should I file for a patent?
- As soon as you feel the invention is ready! The United States is a so-called “first to file” country (as are most), so it won’t do you much good to sit on your disclosure.
Can I file my own patent application?
- You can certainly try, but unless you have experience doing so, I would not recommend it. Both provisional and non-provisional patent applications have a lot of requirements, and should handled by an experienced practitioner.
- Provisional Patent Applications can be done relatively inexpensively by an experienced patent practitioner, and could save you many headaches when you decide to convert your provisional application to a non-provisional application. Furthermore, I can tell you from personal experience that trying to enforce an inventor-drafted patent is extremely difficult. Don’t be a penny wise and a pound foolish.
How long do patents last?
- Assuming all maintenance fees are paid, utility patents last 20 years from the earliest filing date of the patent. However, for utility patent applications filed on or before June 8, 1995, the patent expires 17 years from the date that claims issue.
- Patents issued from design applications filed before May 13, 2015 have a 14 year term from the date of grant. Design patents resulting from applications filed on or after May 13, 2015 have a 15 year term from the date of grant. (Maintenance fees are not required for design patents). See 35 U.S.C. §§ 120, 121, 173, 365(c), and 386(c).
What does it mean when a patent is declared invalid? How do I invalidate a patent?
- An invalidated patent is no longer enforceable. You can invalidate a patent in a few different ways, and you can do so through a variety of procedural mechanisms. First, here are the ways to invalidate a patent:
- Locate “prior art” that has more relevance than what is contained in the patent’s file history (“file wrapper”), such as a previously-filed patent application, or a printed publication that discloses the claimed invention. A single piece of prior art can cover the invention on its own, or it can be combined with other prior art references to help you argue a patent claim is invalid.
- Prove that the claimed invention was on sale, offered for sale, or in public use in the United States a year or more before the patent application was filed.
- Challenge the inventorship of the patent. If a patent does not properly list the inventors, that is an independent basis to invalidate the entire patent.
- You can challenge a U.S. patent in U.S. District Court, the United States Patent Office, or the International Trade Commission.
How do I challenge or invalidate someone else’s patent?
- If you want a declaration from a court that you do not infringe someone’s patent, you may be able file a “declaratory judgment action” (“DJ action”) in U.S. District Court, provided you meet the other requirements for a DJ action (i.e. actual controversy, and is not merely advisory). You can also file a DJ action in U.S. District Court to prove that one or more parts of a patent are “invalid.”
- A variety of “post-grant proceedings” are available to invalidate one or more claims of someone else’s patent, and each one has very specific requirements for filing: ex parte reexamination, inter partes reexamination, inter partes review, and post-grant review.
What is ex parte reexamination of a patent?
- It is an administrative procedure in the U.S.P.T.O. that permits the USPTO to reconsider the patentability of the claims in any issued patent in view of prior art which was not considered in the original prosecution of the application. This permits you to submit only patents and printed publications that were not considered during the prosecution of the patent; and you can only argue that the challenged claim(s) should be invalidated under 35 U.S.C. §§ 102 (anticipation) or 103 (obviousness).
- You can file an ex parte reexamination of any patent any time the patent is enforceable, but you must demonstrate that the evidence you submit gives rise to a “substantial new question” (“SNQ”) of patentability. In other words, an examiner must consider the evidence to be “important” to determine the patentability of the claims.
What is inter partes reexamination of a patent?
- It is an administrative procedure in the U.S.P.T.O. that permits the USPTO to reconsider the patentability of the claims in any patent subject to an application between and including 29, 1999 through Sept. 15, 2012). Similar to an ex parte reexamination, you can only submit prior art which was not considered in the original prosecution of the application; and you can only submit patents and printed publications that were not considered during the prosecution of the patent. Also, you can only argue that the challenged claim(s) should be invalidated under 35 U.S.C. §§ 102 (anticipation) or 103 (obviousness).
- For applications filed before Sept. 16, 2011, you must demonstrate a “substantial new question” (“SNQ”) of patentability. In other words, an examiner must consider the evidence to be “important” to determine the patentability of the claims. For applications filed Sept. 16, 2011 and thereafter, you have to demonstrate a “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim.
What is inter partes review of a patent?
- Also called an “IPR,” it is an administrative proceeding before the U.S.P.T.O. that allows a third party to challenge the validity of someone else’s patent. You can file an IPR on or after nine months after patent issuance or issuance of reissue; or the termination of a “post-grant review.” Similar to ex parte reexamination and inter partes reexamination, you can only challenge the patent claims based on 35 U.S.C. §§ 102 and/or 103 using patents and printed publications. In contrast to the “SNQ” standard, however, you have to demonstrate a “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim.
What is post-grant review of a patent?
Also called a “PGR,” it is an administrative proceeding that allows you challenge a patent claim with an effective filing date that is on or after March 16, 2013. You must file within nine months after the patent issuance or reissue. In stark contrast to ex parte reexam, inter partes reexam, and inter partes review, you can raise any ground except failure to comply with the best mode requirement in a PGR. In further contrast, you only have to demonstrate that it is “more likely than not” that at least one of the claims challenged in the petition is unpatentable.
When should I file for a copyright?
- Preferably you should file for copyright protection before you publish the work, but you should still file regardless of timing for a few reasons:
- If you file before publication, you have more flexibility in utilizing the U.S. Copyright Office’s very useful batch-filing procedures and only pay only application fee per “batch” of works.
- Once you obtain registration, you can file an infringement action in U.S. District Court.
- If you file within five years of publication. the registration serves as evidence that your copyright is valid, which can save you a lot of time and money if you have to assert your copyright against an infringer.
- If you file within the first three months of publication, you are entitled to seek statutory damages and attorney’s fees.
- In most cases, filing for registration satisfies the “deposit requirement” of the Copyright Act.
- From a practical/business standpoint, just about every sophisticated licensee of your work will require a valid copyright registration to be in place so they can also enjoy the benefits of registration.
Can I file for a copyright registration after I publish my work?
- Yes. If you file within five years of publication. the registration serves as evidence that your copyright is valid, which can save you a lot of time and money if you have to assert your copyright against an infringer.
- If you file within the first three months of publication, you are entitled to seek statutory damages and attorney’s fees. However, if you don’t file for copyright registration within three months of publication, you can only be awarded “actual damages” (not statutory damages or lost profits or attorney’s fees). Actual damages are often very difficult to prove, so file early and often!
How long do copyrights last?
- The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a baseline proposition, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years.
For more information please contact me.