The U.S. Patent and Trademark Office conducts a search for conflicting trademarks as part of the official examination of an application. Therefore, a pre-application search is always a good idea.
As we have previously mentioned on this blog, one of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark and a previously registered mark or a pending application with an earlier filing date.
As such, the primary purpose of the search is to help determine whether a mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.
When conducting a pre-application trademark search, the Trademark Electronic Search System (TESS) is a great place to start. It contains the records of active and inactive trademark registrations and applications. As mentioned above, in addition to studying the marks for similarity, it is also important to examine the listed goods and/or services to determine possible relatedness as well.
How Can We Help?
Since trademarks can also be obtained via state registrations and common law, a successful TESS search does not guarantee that your trademark application will be approved. In many cases, it is advisable to consult with an experienced trademark attorney before filing a trademark application. Contact us today by phone or email to schedule your free 30 minute consultation.
Source: USPTO
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Friday, February 10, 2012
Trademark FAQ: Why Is a Trademark Search Necessary?
Thursday, February 9, 2012
USPTO Releases Proposed Rules for Supplemental Examination
As promised, the U.S. Patent and Trademark Office has published another set of new rules. This time, the USPTO is proposing rules to implement the supplemental examination provisions of the America Invents Act. It is also proposing to adjust the fee for filing certain ex parte reexamination requests and petitions.
As detailed by the USPTO, the proposed supplemental examination procedures will allow a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. As noted by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.”
Under the new rules, a request for supplemental examination must include the following:
- An identification of the patent for which supplemental examination is requested;
- A list of each item of information and its publication date, if applicable;
- A list identifying any other prior or concurrent post patent proceedings involving the patent to be examined;
- An identification of each aspect of the patent to be examined;
- An identification of each issue raised by each item of information;
- A separate, detailed explanation for each identified issue;
- An explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified issue;
- A copy of each item of information; and
- A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Wednesday, February 8, 2012
California Patent FAQ: What Are the Conditions for Obtaining a Patent?
As we have mentioned on this blog, in order for an invention to be patented, it has to be new. But what exactly does that mean?
Under U.S. patent law, an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States …”
There are a few points to highlight with respect to the definition above. First, you must consider the invention’s novelty both in this country and abroad, although different standards do apply. If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before you created it, the invention is not patentable.
Second, time is of the essence. If you describe the invention in a printed publication, use it publicly, or offer it for sale, you must apply for a patent within one year. If not, you forfeit your rights.
Finally, there is yet another consideration. Even if the invention involves one or more differences, it may still not be patentable if the differences would be considered obvious. As explained by the USPTO, “the subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention.” Obvious differences would include changing the size or color of the invention.
How We Can Help
Of course, this post provides only a broad overview of the conditions for obtaining a patent. Before embarking on the patent process, it is often advisable to consult with an experienced patent attorney. Contact us today to schedule your free 30 minute consultation.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Tuesday, February 7, 2012
MegaUpload.com Copyright Infringement Case Prompts File-Sharing Companies to Change Policies
Even though legislative efforts are on hold for now, online piracy continues to dominate the headlines. As has been widely reported, MegaUpload.com founder Kim Dotcom was recently arrested in Australia as the request of the U.S. government. The FBI and Department of Justice allege Dotcom (born Kim Schmitz) was the mastermind behind one of the largest cases of copyright infringement to date.
Prior to the arrests, U.S. authorities shut down Megaupload.com, a popular file locker service that allowed users to upload files and share them with other users. They say the site was used to facilitate millions of illegal downloads of films, music, and other copyrighted content. The copyright infringement cost copyright holders at least $500 million in lost revenue, according to the government.
In total, seven people have been indicted by grand jury, each charged with five counts of copyright infringement and conspiracy. The possible penalty is 20 years in prison.
What Does the Case Mean for Other File-Sharing Sites?
As we have previously discussed on this blog, websites that offer file-sharing do take certain risks. To avoid allegations of copyright infringement, they must have procedures in place to address potential cases of online piracy. This includes promptly responding to takedown requests issued under the Digital Millennium Copyright Act (DMCA).
In the wake of the Megaupload charges, several other companies that offer file-sharing have taken additional legal precautions. Rival companies FileSonic and Uploaded.to have significantly altered their services to avoid the risk of facing similar allegations of copyright infringement.
According to Ars Technica, FileSonic has halted all of its file-sharing activities. It now tells users “our services can only be used to upload and retrieve files that you have uploaded personally.” Meanwhile, Uploaded.to has blocked its site to U.S. users, although it is still available to users elsewhere in the world.
We will continue to follow this case and any related legal developments.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Monday, February 6, 2012
NFL Trademark Forces Super Bowl Advertisers Tip Toe Around the Name of the Big Game
If you watched the Super Bowl last night, you may have noticed that very few advertisers referred to the game by its official name. That’s because the National Football League closely guards its “Super Bowl” trademark and allows only a few official sponsors to use the phrase in their marketing efforts.
“When we become aware of a potential violation, we will be very aggressive, and sending a cease-and-desist letter would be the first step,” NFL spokesman Brian McCarthy told the Chicago Tribune.
Licensing the trademark is big business for the NFL. Sponsors like Pepsi, Verizon, Motorola, and Castrol pay more than $100 million annually to be affiliated with the league. While there is no specific sponsorship of the Super Bowl, NFL sponsors have the right to use the game’s name and logo in their own marketing efforts, according to McCarthy.
To avoid any allegations of trademark infringement, other advertisers refer to the Super Bowl simply as the “Big Game” or the “Super Showdown.” In fact, the “The Big Game” has become so synonymous with the Super Bowl that the NFL tried to trademark that phrase in 2006.
Businesses that don’t steer clear of the trademark may receive one of the 80 to 100 cease-and-desist letters the NFL sends each year to businesses promoting some Super Bowl special.
“They’re trying to draft off the goodwill that we’ve built up over the past 46 years with the Super Bowl,” McCarthy said. “Part of the reason we’ve been able to build up the Super Bowl is by protecting our intellectual property. We’re very protective of where and to whom we extend our rights. We need to protect the NFL shield. We need to protect the Super Bowl mark for our brand.”
How Can We Help Your Business?
The NFL is an excellent example of the benefits of zealously defending your trademark. If you would like to do the same for your valuable trademarks, contact us today by phone or email to schedule your free 30-minute consultation.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Friday, February 3, 2012
Is The Patent Fast Track Working?
The Track I Prioritized Patent Examination Program appears to be doing its job, according to a recent blog post by Peggy Focarino, the USPTO Commissioner for Patents. As we have discussed on our blog, the expedited track allow inventors and businesses—for a fee of $4,800—to have their patents processed within 12 months.
The USPTO update reveals some interesting information about how the program is working so far. Here are a few highlights:
- To date, 1,694 Track I petitions have been submitted to the USPTO.
- On average it is taking 40.8 days to move Track I cases from receipt of petition to completion of pre-examination processing (which includes deciding on the petition). The longest it has taken is 95 days.
- Overall, 1,218 of the 1,231 requests of the prioritized examination (that have been decided) were granted. This represents a 98.9% approval rate.
- On average, the USPTO is getting the first action out in Track I cases just 30.7 days after approval of the petition – for a total elapsed period to first action of 66.4 days after filing of the request-petition.
- The USPTO notes 23 allowances have already been mailed on Track I applications, the fastest of which was mailed just 37 days after the application was filed.
Therefore, according to the USPTO, the only changes Track I patent applicants should expect is faster results.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.
Thursday, February 2, 2012
NFL Player Loses Race to Trademark Office
While Baltimore Ravens linebacker Terrell Suggs may be good at defending the quarterback, he has a lot to learn about protecting his intellectual property. Suggs recently lost a race to the federal trademark office, after trying to cash in on a stunt he pulled before the team’s recent playoff game against the Pittsburgh Steelers.
If you follow the NFL, you are likely familiar with the opening of the telecast where the players of each team state their names and the universities they attended. During the Nov. 6 game, Suggs introduced himself as “Sizzle” and a graduate of “Ball So Hard University.”
According to the Hollywood Reporter, shortly after the game, an entrepreneur named Brian Bussells applied for a trademark on “Ball So Hard University,” with the intention of using the mark on T-shirts and other apparel. He beat Suggs to the U.S. Patent and Trademark Office by 10 days.
Now, the two men and their respective business enterprises are fighting over who should have the rights to the “Ball So Hard University” mark. Suggs’ lawyer sent a cease-and-desist letter to Bussells, claiming that the use of the mark is false and misleading, creates confusion, and also violates Suggs’ rights of publicity.
Bussells is currently selling merchandise at BallSoHardU.com. Meanwhile, Suggs’ company Team Sizzle Worldwide is offering licensed “Ball So Hard” merchandise on its website.
Unlike many who face Suggs on the football field, Bussells doesn’t appear to be backing down. Therefore, the trademark dispute will likely come down to how and when each party used the catchphrase in commerce.
For more information about the requirements for using a trademark in commerce, please check out previous blog post here.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.