Sheldon Mak & Anderson - USIP.com

Friday, December 30, 2011

Copyright FAQ: Is a Copyright Notice Required?

Tax HelpU.S. law no longer requires the use of a copyright notice. However, prior law did contain such a requirement, and the use
of a notice is still relevant to the copyright status of older works.
Works published before January 1, 1978, are governed by the previous copyright law. Under that law, if a work was published under the copyright owner’s authority without a proper notice of copyright, all copyright protection for that work was permanently lost in the United States.

The Benefits of a Copyright Notice

Although a copyright notice is not required, it is certainly beneficial. A copyright notice informs the public that a work is protected by copyright, identifies the copyright owner, and shows the year of first publication.
More importantly, in the event that a work is infringed, if a copyright notice was used, the court will not give any weight to a defendant’s claim that he or she did not realize that the work was protected (referred to as an innocent infringement defense).

How to Create a Copyright Notice

In general, in order to be valid, a copyright notice should contain:

  • The symbol © (letter C in a circle); the word “Copyright”; or the abbreviation “Copr.”
  • The date of publication, and
  • The name of either the author or the owner of all the copyright rights in the published work.
Example: © 2011 Jane Doe

How We Can Help

Of course, this post provides only a broad overview of copyright notices. If you are seeking to copyright a work, it is advisable to consult with an experienced intellectual property attorney.

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.

[+/-] read more...

Thursday, December 29, 2011

USPTO Announces Changes to Two Patent Programs

Tax HelpThe United States Patent and Trademark Office (USPTO) has announced that the Patent Application Backlog Reduction Stimulus Plan and the Green Technology Pilot Program will be phased out. Going forward, the USPTO is encouraging applicants to take advantage of the Prioritized Examination Track (Track I), which allows applicants, for a fee, to have their patent applications processed to final disposition within 12 months from prioritized status being granted.

The Patent Application Backlog Reduction Stimulus Plan

The Patent Application Backlog Reduction Stimulus Plan is available if the applicant expressly abandons another copending unexamined application. The USPTO has announced that the program has fulfilled its purpose and will not be extended through its current expiration date of December 31, 2011.

The Green Technology Pilot Program

The Green Technology Pilot Program is available to patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. This plan will be extended until 500 additional applications have been accorded special status under this program or until March 30, 2012, whichever occurs earlier. Following the expiration of this extension, the program will be eliminated

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) to find out how we can provide powerful protection for your unique ideas.

[+/-] read more...

Wednesday, December 28, 2011

Update: Lawmakers Release SOPA Alternative

Tax HelpEarlier this month, lawmakers introduced legislation intended to serve as an alternative to the Stop Online Piracy Act. The bill’s sponsors, Senator Ron Wyden (D-OR) and Representative Darrell Issa (R-CA), are asking the Internet community to weigh in on the bill and suggest changes.

As we discussed in a previous blog post, SOPA is intended to crack down on online copyright infringement. Tech giants such as Google, Facebook, Twitter, and Yahoo oppose the bill, saying that it would require them to essentially police the Internet, and could stunt the growth of innovation and job creation on the Web.

The Online Protection and Enforcement of Digital Trade (OPEN) Act would expand the authority of U.S. International Trade Commission with respect to intellectual-property infringement complaints. Using the ITC’s intellectual property (IP) enforcement expertise will make it possible “to go after legitimate cases of IP abuse without doing irreparable harm to the Internet,” Wyden said in a statement.

“It is our hope that proponents of other approaches won’t just dismiss our proposal, but will instead take this opportunity to engage us on the substance,” he added. “Yes, IP infringement is a problem, but the Internet has become such an important part of our economy and our way of life that it is essential for us to get the policies that shape its future right.”

How Would OPEN Work?

Under OPEN, U.S. copyright holders would be able to petition the ITC to investigate cases of illegal digital imports, using a process similar to the current process for investigating infringement cases involving physical goods. If an ITC investigation finds that a foreign-registered website is “primarily” and “willfully” infringing on the rights of a U.S. copyright holder, the commission would issue a cease-and-desist order that would compel third parties, such as payment processors and online advertising providers, to cease conducting business with that website.

What’s Next?

At KeeptheWebOpen.com, visitors can submit comments, suggest edits, and ask questions about the legislation. Visitor feedback will allow the lawmakers fine-tune the legislation, the lawmakers said in a press release.

In the meantime, we will continue to monitor the progress of both OPEN and SOPA.

Source: Networkworld.com

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.

[+/-] read more...

Tuesday, December 27, 2011

Blackberry Name Snafu Highlights Importance of Trademark Research

Tax HelpSmart phone maker Research in Motion recently demonstrated the importance of conducting trademark research before committing to a name for your product. Less than two months after the maker of the Blackberry devices announced that its new operating system would be called BBX, the company was forced to alter course. It will now be called BlackBerry 10.

The change was prompted by a restraining order secured in federal court by a small Albuquerque-based software maker, Basis International. The company has long used the name BBx on its own software products.

After RIM announced the BBX name at a developers’ conference in San Francisco in October, Basis sought a permanent injunction under trademark laws. It also asked for the temporary order to prevent RIM from using the name at its developer’s conference in Singapore this month.

In a statement on Wednesday about the name change, RIM did not acknowledge the trademark infringement action by Basis International. “The BlackBerry 10 name reflects the significance of the new platform and will leverage the global strength of the BlackBerry brand while also aligning perfectly with RIM’s device branding,” the statement said.

Source: NY Times

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 a powerful defense of your unique ideas.

[+/-] read more...

Copyright FAQ: Can a Copyright Owner Transfer His Rights?

Tax HelpAs with any other property right, any or all of a copyright owner’s exclusive rights may be transferred. In fact, it is quite common when a copyright owner wants to commercially exploit the work covered by the copyright. Of course, there are certain rules and requirements that must be followed to ensure that a transfer is legally enforceable and protects the rights of the parties involved.

For instance, if a copyright owner seeks to transfer his exclusive rights, the transfer must be made in writing and signed by the owner of the rights conveyed or his duly authorized agent. Transfer of a right on a nonexclusive basis does not require a written agreement.

A copyright may also be conveyed by operation of law. For example, a copyright may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

Types of Transfers

Transfers of copyright are normally made by contract, under the terms of which the copyright owner may restrict the terms of the transfer. For instance, the owner may limit the transfer to a specific period of time or certain type of media.

If a copyright owner transfers all of his rights unconditionally, it is generally termed an “assignment.” When only some of the rights associated with the copyright are transferred, it is referred to as a “license.”

An exclusive license is created when the transferred rights can be exercised only by the owner of the license, and no one else—including the person who granted the license. If the license allows others to exercise the same rights being transferred in the license, the license is deemed non-exclusive.

Recording a Transfer

Although recordation is not required to create a valid transfer between the parties, transfers may be recorded with the U.S. Copyright Office. In fact, it is often advisable. Recordation offers certain legal advantages and may be required to validate the transfer as against third parties.

How We Can Help

Of course, this post provides only a broad overview of the copyright transfer process. If you are seeking to transfer your rights, it is advisable to consult with an experienced intellectual property attorney.

Sources: Copyright.gov and Stanford.edu

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 a powerful defense of your unique ideas.

[+/-] read more...

Friday, December 23, 2011

Patent FAQ: What Is a Provisional Patent?

Tax HelpA provisional application for patent allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. A Provisional patent offers several advantages: It provides the means to establish an early effective filing date in a later filed non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description of the invention.

How Does It Work?

A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. It is important to note that the 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

Are There Any Limitations?

While applying for a provisional patent often makes sense, as it gets the ball rolling to protect an invention, it does have some limitations.

As outlined by the USPTO, they include the following:

  • The benefits of the provisional application cannot be claimed if the 12-month deadline for filing a non-provisional application has expired.
  • A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date: 1. a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or 2. a grantable petition to convert the provisional application into a non-provisional application is filed.
  • Provisional applications for patent may not be filed for design inventions.
  • Provisional applications are not examined on their merits.
  • Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
  • In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
  • The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
  • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
How We Can Help

Of course, this post provides only a broad overview of provisional patents. If you are seeking to patent an invention, it is advisable to consult with an experienced intellectual property attorney.

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 a powerful defense of your unique ideas.

[+/-] read more...

Thursday, December 22, 2011

Patent Litigation: Supreme Court Decision to Impact Medical Industry

Tax HelpEarlier this month, the Supreme Court heard arguments in Mayo v Prometheus. As we noted in an earlier blog post, the issue before the Court is whether Prometheus Labs should be allowed to patent a correlation between drug metabolite levels and patient health under 35 U.S.C. §101.

The Facts of the Case

The patents at issue concern tests for the effectiveness of thiopurines, drugs that are routinely used to treat a variety of gastrointestinal disorders. Their effect depends on how they are metabolized. The patents cover the process for determining whether a given dose produces concentrations of metabolites within a recommended range and allows doctors to adjust it accordingly.

Prometheus sells a test based on its patents to hospitals and clinics. In 2004, Mayo developed a competing test, featuring different recommended levels of metabolites. Citing patent infringement, Prometheus sued.

The Legal Arguments

As we mentioned last week, patent law does not allow patents of nature and abstract ideas. Rather, patents can be issued for a machine, article of manufacture, composition of matter, or process. In many cases, it is easy to determine if an invention fits into one of these categories. However, when it comes to technology, the analysis is often more complicated.

Future medical advances, Prometheus argued in its brief, will likely concern “uniquely targeted treatments” based on an individual’s genetic makeup. In order to foster development, these discoveries should be afforded patent protection.

However, as Justice Stephen G. Breyer put it: “What has to be added to a law of nature to make it a patentable process?”

On this question, Mayo’s lawyers contend Prometheus has patented a mere observation of the body’s natural workings. The federal government seems to agree, claiming that “you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.”

The Implications

Many predict that the Supreme Court’s decision will have broad implications on the future of personalized medicine. It will also likely impact research firms and drug makers, particularly those that are studying genetic correlations that might predict a drug’s efficacy or determine the cause of a disease.

As evidenced by the questioning by the Court, there is likely no easy test to determine the patentability of medical processes. It will be interesting to see what the Court decides when its decision is issued next spring.

Source: The Washington Post

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 a powerful defense of your unique ideas.

[+/-] read more...

Wednesday, December 21, 2011

Trademark Litigation: Are You Team Chicken or Team Kale?

Tax HelpIf you haven’t yet heard, a David and Goliath-type trademark dispute has social media abuzz. The clash pits fast-food company Chick-fil-A against a Vermont folk artist named Bo Muller-Moore.

The trademark dispute began when Muller-Moore recently applied to trademark his phrase “Eat More Kale.” He hand-screens t-shirts with the slogan, which are sold in Vermont and across the country via his website, eatmorekale.com.

Earlier this fall, Chick-fil-A sent Muller-Moore a cease and desist letter, telling him to stop using the phrase “Eat More Kale” and to turn over the website eatmorekale.com to them. The fast food giant argues it’s too similar to the company’s already trademarked “Eat Mor Chickn” phrase.

Specifically, Chick-fil-A contends that the “Eat More Kale” slogan is “likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A’s intellectual property and diminishes its value.”

Meanwhile, Muller-Moore contends that the issues of dilution and confusion aren’t applicable in this case. As noted by his attorney, “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’ ”

One of the most interesting aspects of this trademark dispute is the role of social media, which has allowed Muller-Moore to galvanize support. As noted by a recent Forbes article, the hash tag #eatmorekale has become prominent on Twitter. On Facebook, thousand of fans have flocked to the Eat More Kale page to offer support.

Change.org also created an online petition that has already received close to 20,000 of the 25,000 signatures it needs. The petition asks Chick-fil-A to “please quit blocking EATMOREKALE.COM’s federal trademark application.”

While the media attention and social media support have clearly been good for Muller-Moore’s business, it will be interesting to see what effect, if any, it has on Chick-fil-A’s legal position.

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 a powerful defense of your unique ideas.

[+/-] read more...

Tuesday, December 20, 2011

Judge Has Tough Words for Attorneys on Both Sides of Apple-Samsung Dispute

Tax HelpApple and Samsung are locked in a bitter patent war that spans the globe, with legal actions pending in Australia, the Netherlands, and the U.S., to name a few.

The battle began in April when Apple filed a lawsuit in California, alleging that Samsung’s Galaxy phones and tablets infringed upon Apple patents and unlawfully copied design and functionality elements of its iPhones and iPads. Samsung subsequently fired back allegations of its own, contending that Apple had violated a number of Samsung’s wireless networking patents.

Most recently, attorneys for both sides got caught up in the fray. Apple filed a motion for a protective order seeking to prohibit one of Samsung’s attorneys from participating in any further depositions. Alternatively, Apple asked the court to restrain the attorney from engaging in abusive conduct during depositions, including belligerent and insulting treatment of witnesses and uncivil treatment of opposing counsel. Samsung, meanwhile, contended that none of the actions of the attorney were inappropriate given the adversarial nature of the proceedings.

U.S. District Judge Lucy Koh, who is hearing the case, made more than clear that she was not happy that the issue made it all the way to the courtroom. In her opinion, she wrote, “In support of their respective positions, both sides file transcript after transcript. Both sides encourage the review of deposition DVD after deposition DVD. And yet, remarkably, neither side confronts to even truly acknowledges evidence undermining its preferred conclusion, in textbook examples of what psychologists refer to as ‘confirmation bias.’”

The court also noted that neither party followed the district court’s requirement that lead trial counsel meet and confer before filing this type of motion. “Nor does either side point to even one instance in which it followed Judge Koh’s explicit instruction for lead trial counsel to meet in person before imposing on the court what is essentially a motion to behave.”

Accordingly, the court denied Apple’s motion. The opinion states, “In light of this unfortunate record of non-compliance with Judge Koh’s instructions, the court denies Apple’s motion. These instructions were not optional, and at no point have the parties sought relief from these instructions even after the undersigned reminded them of that opportunity. The court must therefore decline to share the conclusions it has reached about what is depicted in the transcripts and DVDs stacked on the court’s desk.”

Clearly, this is a situation where neither party came out on top. It reminds us that, even it the most contentious legal disputes, counsel should work together to find common ground.

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 a powerful defense of your unique ideas.

[+/-] read more...

Monday, December 19, 2011

Copyright Law at Center of Dispute Between Dentist and Patient

Tax HelpA dissatisfied patient with a bill totaling nearly $4,800 has filed a copyright lawsuit against his dentist. He also claims an agreement, which bars him from criticizing the dentist, is unconscionable.

The legal dispute stems from negative comments posted by Robert Lee regarding his Manhattan dentist, Dr. Stacy Makhnevich. The aggrieved patient criticized Makhnevich on Yelp and other online sites, claiming she overbilled him and advising others to “avoid at all cost!”

As detailed in a press release by Public Citizen, Lee went to Makhnevich to treat a severely sore tooth. Before he could be treated, he was handed several forms to sign. One of them required Lee to agree not to publish any commentary about the dentist, not to disparage the dentist, and to assign copyright to the dentist for any commentary that Lee wrote. Lee was reluctant to give up his right to publish commentary, but he was in severe pain and so signed the form.

Makhnevich subsequently sent Lee an invoice for $4,766. Lee paid the bill and asked the dentist to send the necessary paperwork to his insurance company. After the dentist sent the information to the wrong insurance provider, Lee asked for his records so he could submit the claim himself. Lee alleges that Makhnevich refused and instead referred Lee to a third party that demanded five percent of the total bill for copying the records.

Following these incidents, Lee criticized Makhnevich on Yelp, DoctorBase, and other online sites. The dentist then sent Lee a letter warning that he had violated the agreement and threatened to sue Lee for breach of contract and copyright infringement.

Makhnevich also contacted Yelp and DoctorBase and demanded Lee’s comments be removed. However, the review sites refused to remove the comments because they regard purported copyright assignments as legally unenforceable. Makhnevich then sent invoices to Lee for $100 a day for copyright infringement in September and October, and sent another letter threatening to sue Lee.

Lee (and Public Citizen) responded by filing a lawsuit. It contends that the agreement Lee was required to sign is unconscionable and should be declared null and void. It further contends that requiring patients to surrender the right to publish truthful criticism violates medical practitioners’ duty to patients because they are placing their own interests above those of their patients. Finally, the lawsuit alleges that the agreement misuses copyright law to suppress expression.

The contract was prepared by a North Carolina company, Medical Justice Services Inc., and has been provided to doctors and dentists around the country. Following the lawsuit, the company is now advising its customers to stop using the agreements, according to Ars Technica.

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 a powerful defense of your unique ideas.

[+/-] read more...

“Free” Patent Search And Patent Application

Tax HelpJeffrey Sheldon at our firm teaches a patent preparation and prosecution course at Southwestern Law School.  The class actually conducts patent searches and writes a patent application during the semester.

If you have an invention that you would like to use for the class, please contact Mr. Sheldon at jgsheldon@usip.com.  It needs to be a relatively simple mechanical invention.

If the search results are positive, then the class may write a patent application for the invention.  You will have the option of filing the application and pay the Patent Office fees yourself.  You will need to and attend the first class session to disclose your invention to the class.  The first class is on January 11, 2012 at 8:10 p.m.

The class will be requested to keep the invention confidential, but such confidentiality cannot be guaranteed.

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 a powerful defense of your unique ideas.

[+/-] read more...

Friday, December 16, 2011

Trademark Litigation: What Do Women’s Shoes and Candy Have in Common?

Tax HelpShoes and candy are the subject of a trademark lawsuit between the manufacturer of Tootsie Roll candy and a small shoe company who sells the “Footzyrolls” brand of shoe. The suit accuses Rollashoe of intentionally preying on Tootsie Roll Industries’ trademark made popular by its lollipops and chewy candies.

Specifically, the candy maker contends that Rollashoe has infringed its trademark and diluted or blurred Tootsie Roll’s brand name.

Footzyrolls “so resembles each of the Tootsie Roll Marks in sound, commercial impression and appearance that when used in association with footwear, it is likely to cause confusion, to cause mistake or deceive,” Tootsie Roll alleged in its complaint.

Because Tootsie Roll also licenses the use of its “Tootsie Roll” trademark for clothing, footwear, and accessories, the company claims that both companies target a similar class of consumers likely to assume the compact shoes are affiliated with Tootsie Roll. The complaint goes so far as to characterize Rollashoe’s branding as “willful, malicious and fraudulent.”

Meanwhile, Rollashoe maintains that Tootsie Roll has no evidence that any customers are confusing Footzyrolls with the candy brand. In addition to Footzyrolls, Rollashoe has applied to register the Footzyfolds trademark for foldable shoes as well as Footzysocks.

“All our products have names associated with Footzy, the next part describes what it is,” said Jenifer Caplan. She said Tootsie Roll has tried to block Rollashoe from registering all Footzy variations in the Patent and Trademark Office. “Whatever we apply for now, Tootsie Roll opposes us,” she said.

It will be interesting to see how this case is resolved. Tootsie Roll may have a hard time establishing the likelihood of confusion element given that candy and shoes appeal to such different markets. Given that Tootsie Roll has held its famous trademark since 1908, it may have better luck with the dilution argument.

Source: Reuters

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 a powerful defense of your unique ideas.

[+/-] read more...

Thursday, December 15, 2011

A Question for the Holidays: Can You Copyright a Recipe?

Tax HelpWith the holidays right around the corner, you may be wondering if grandma’s famous apple pie recipe can be protected. Here’s the scoop when it comes to recipes and copyrights.

Under U.S. copyright law, a mere listing of ingredients is not protected. As noted in the seminal copyright case addressing recipes, Publications Intl. v. Meredith, 88 F.3d 473 (7th Cir. 1996):

“The identification of ingredients necessary for the preparation of each dish is a statement of facts. There is no expressive element in each listing; in other words, the author who wrote down the ingredients for ‘Curried Turkey and Peanut Salad’ was not giving literary expression to his individual creative labors. Instead, he was writing down an idea, namely, the ingredients necessary to the preparation of a particular dish.”

However, this does not mean that copyright protection is unavailable in other circumstances. Where a recipe or formula is accompanied by substantial literary expression in the form of an explanation or directions, or when there is a collection of recipes as in a cookbook, there may be a basis for copyright protection.

However, before running off to copyright that apple pie recipe, its important to note that if you have secret ingredients to a recipe that you do not wish to be revealed, you should not submit your recipe for registration, because applications and deposit copies are public records.

Source: Copyright.gov

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 a powerful defense of your unique ideas.

[+/-] read more...

Wednesday, December 14, 2011

USPTO Releases New Rules for Ex Parte Appeals

Tax HelpThe United States Patent and Trademark Office (USPTO) has released new rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals. An ex parte patent appeal is an appeal from a final rejection of a claim by a patent examiner.

As noted by the USPTO, the final rule is intended to ensure that the Board has adequate information to decide ex parte appeals on the merits, while not unduly burdening appellants or examiners with unnecessary briefing requirements.

More specifically, the rules for ex parte appeals will:

  • Remove several of the briefing requirements for an appeal brief,
  • Provide for the Board to take jurisdiction over the appeal earlier in the appeal process,
  • No longer require examiners to acknowledge receipt of reply briefs,
  • Create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision,
  • Provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment, and
  • Clarify that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection.
It is important to note that the USPTO has also withdrawn a previously published final rule that never went into effect.

Source: Government Printing Office

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 a powerful defense of your unique ideas.

[+/-] read more...

Tuesday, December 13, 2011

USPTO Considering Changes to Patent Assignment Process

Tax HelpThe U.S. Patent and Trademark Office (USPTO) has announced that it is looking to revamp the patent assignment process. According to the USPTO, the changes are designed to facilitate the collection of more timely and accurate patent assignment information both during prosecution and after issuance.

As noted by the USPTO, a more complete patent assignment record would produce a number of benefits, such as:

  • The public would have a more comprehensive understanding of what patent rights being issued by the United States are being held and maintained by various entities.
  • The financial markets would have more complete information about the valuable assets being generated and held by companies.
  • Patenting inventors and manufacturers would better understand the competitive environment in which they are operating, allowing them to better allocate their own research and development resources, and more efficiently obtain licenses and accurately value patent portfolios and patent estates that they may seek to acquire.
To elicit more comprehensive patent assignment data, the USPTO is considering changes to require that any change in the identity of the assignee or assignees (i.e., real party in interest) be made known to the Office within each communication to the Office by the representative of the applicant during patent prosecution.

Specifically, the proposed new rules would:
  • Require that any assignee or assignees be disclosed at the time of application filing;
  • Require that the application issue in the name of the assignee or assignees as of the date of payment of the issue fee;
  • Require the identification of assignment changes after filing date for inclusion on the patent application publication;
  • Require timely identification of any new ownership rights that cause the application or issued patent to gain or lose entitlement to small entity status; and
  • Provide discounted maintenance fees in return for verification or update of assignee information either when a maintenance fee is paid or within a limited time period from the date of maintenance fee payment.
For those wising to weigh in on the proposed changes, the USPTO is accepting comments on the proposed rules until January 23, 2012.

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 a powerful defense of your unique ideas.

[+/-] read more...

Monday, December 12, 2011

Patent FAQ: Is My Invention Patentable?

Tax HelpA patent is a valuable property right because it excludes others from “making, using, offering for sale, or selling your invention throughout the United States or importing the invention into the United States” for a certain period of time.

However, before embarking on the patent process, the first step is determine if your invention can indeed be patented.

What Can Be Patented

Utility patents are provided for the following, so long as they are new, nonobvious, and useful:

  • Processes
  • Machines
  • Articles of manufacture (i.e. chairs, shovels, gloves, shoes, envelopes, and mouse-pads)
  • Compositions of matter (defined as the “an instrument formed by the intermixture of two or more ingredients, and possessing properties which belong to none of these ingredients in their separate state”)
  • Improvements of any of the above
In addition to utility patents, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.

What Cannot Be Patented

The following are not afforded patent protection:
  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (these can be copyrighted)
  • Inventions that are not useful (the USPTO cites perpetual motion machines as an example)
  • Inventions that are offensive to public morality
Source: USPTO

How We Can Help

Of course, this post provides only a broad overview of patentability. If you are seeking to patent an invention, it is advisable to consult with an experienced intellectual property attorney.

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 a powerful defense of your unique ideas.

[+/-] read more...

Friday, December 9, 2011

Should California Be the Location for the Newest USPTO Office?

Tax HelpCalifornia legislators and business leaders are lobbying for the state to serve as the newest location for a U.S. Trademark and Patent Office. The America Invents Act authorizes the creation of two new satellite patent offices, which are intended to alleviate the immense backlog on patent applications.

Although the offices are not slated to open for another three years, the competition among states is fierce. In addition to California, the states of New Mexico, Colorado, Texas, and Hawaii are all vying to be the home of the newest USPTO offices.

“California is the epicenter of new ideas and research, with the laboratories and the universities,” Rep. John Garamendi, D-Walnut Grove, said in support of the state. “That’s where you want the patent office, where you can have the interaction.”

This week, Garamendi joined 46 other California House members and both of the state’s senators in a delegation letter urging Patent and Trademark Office Director David Kappos to “consider” locating one of the satellite offices in California.

After all, the lawmakers note, Californians lead the nation in patents. Last year, 30,080 patents went to California inventors, amounting to one-quarter of the nation’s total.

“I think it makes sense,” Rep. Mike Honda, D-San Jose, said regarding California’s regional patent office proposal. “If you want to pick strawberries, you go to the strawberry field, right?”

Source: McClatchy Newspapers

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 a powerful defense of your unique ideas.

[+/-] read more...

Thursday, December 8, 2011

Trademark FAQ: Does a Trademark Last Indefinitely?

Tax HelpA trademark can last indefinitely, but it will require some action of the part of its holder. In general, you must file the appropriate maintenance filings with the U.S. Patent and Trademark Office and adopt certain business practices in order to keep your trademark alive.

USPTO Maintenance Filings

To maintain your trademark registration, you must file your first maintenance document before the end of the 6th year after the registration date and other maintenance documents thereafter. It is important to note that the USPTO does NOT send reminder notices when the documents are due.

You must file the following forms:

  • Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration); and
  • Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9 (combined §§8 and 9).
A §8 declaration is due before the end of the 6-year period after the registration date or within the 6-month grace period thereafter. Failure to file this declaration will result in the cancellation of the registration.

A combined §§8 and 9 must be filed before the end of every 10-year period after the registration date or within the 6-month grace period thereafter. Failure to make these required filings will also result in cancellation and/or expiration of the registration.

Required Business Practices

In addition to filing the appropriate paperwork, companies must also adopt certain business practices in order to keep a trademark alive. For instance, trademark rights may be deemed abandoned if you no longer use your mark in commerce and have no intent to do so in the future. Also, if you misuse your mark, including allowing it to become too generic, you may also lose your rights as well.

Given what’s at stake, in order to ensure that you take the proper steps to maintain your trademark, it is best to consult with an experienced trademark attorney.

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 a powerful defense of your unique ideas.

[+/-] read more...

Wednesday, December 7, 2011

Are You Planning to Hire an Invention Promoter?

Tax HelpUnfortunately, there are countless companies that are looking to take advantage of an inventor’s eagerness to bring his or her ideas to market. Therefore, if you or your company is planning to hire an invention promoter, it is important to understand how to discern a legitimate marketing company from a scam.

First, it is important to be aware that the firm must disclose specific information to you regarding their past business practices. This mandatory disclosure form is required by law and is intended to help you make an informed decision whether or not the firm will meet your needs.

Specifically, before an invention promotion contract can be established between you and the firm, each invention promotion firm must disclose to you in writing each of the following items of information:

  • The total number of inventions evaluated by the invention promoter for commercial potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations 
In other words, how much experience does the promoter have? What is their track record? Do they generally give mostly positive or negative evaluations, or is there a balance between their positive and negative evaluation history?
  • The total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter 
This information will give you an idea of just how experienced the promoter or firm is and the volume of services they provide.
  • The total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter 
What financial impact, if any, has the promoter or firm actually made to its customers?
  • The total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by such invention promoter 
Like item (3) above, this information will also enable you to gauge the effectiveness of the firm in evaluating its direct impact on its customers. Note the key words in the last two requirements–”as a direct result of the invention promotion services provided by such invention promoter”. Be aware that just because a license agreement was eventually secured for a given invention does not necessarily mean that it was a “direct result” of the promotion activities of the firm.
  • The names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years 
This information will help you to know the history of the promoter or firm, even if the promoter changes firms or the firm changes its name.
In addition to making sure you receive the required disclosures, it is always advisable to research the reputation of invention promoters/promotions firms before making any commitments. As detailed by the USPTO, it’s best to be wary of any firm that promises too much and/or costs too much. If you are thinking about using one of these firms, ask for references from their current clients and thoroughly research the firm’s reputation. In many cases, a patent attorney can assist you with the vetting process.

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 a powerful defense of your unique ideas.

[+/-] read more...

Tuesday, December 6, 2011

The Patent Pipeline: A Look at the Numbers

Tax HelpFor companies or individuals looking to file a patent application, one of the first questions is always, “How long will it take?” Unfortunately, it is often difficult to provide a specific timeline, as each patent application process is different.

To further complicate matters, the United States Patent and Trademark Office currently has almost 700,000 patents under review and is facing a backlog of over one million. While the USPTO is currently taking steps to speed up the process and clear the backlog, the process is projected to take several years.

Nonetheless, it is possible to look at a few different numbers to arrive at a general idea of how long it may take to proceed through the patent application process.

First Office Action Pendency

First Office Action pendency is the average number of months from the patent application filing date to the date a First Office Action is mailed by the USPTO. The term “pendency” refers to the fact that the application is pending or awaiting a decision. This measure of First Office Action Pendency includes the time until a first action by the USPTO, as well as any time awaiting a reply from an applicant to submit all parts of their application.

As of October 2011, first office action pendency stood at 26.9 months. The USPTO is striving to reduce first action pendency to an average of 10 months by 2015.

Traditional Total Pendency

Total pendency, as traditionally measured, includes the average number of months from the patent application filing date to the date the application has reached final disposition (e.g., issued as a patent or abandoned), which is called a “disposal.” This pendency includes the time periods awaiting action by the USPTO, as well as any time awaiting reply from an applicant.

As of October 2011, total pendency was 33.9 months. The goal of the USPTO is to reduce Traditional Total Pendency to an average of 20 months by 2015.

Of course, patent applications will take longer if an appeal or request for continued examination is filed. If you are concerned about the time frame for patent approval, it is best to speak with an experienced patent attorney who can develop a patent strategy for your unique circumstances.

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 a powerful defense of your unique ideas.

[+/-] read more...

Monday, December 5, 2011

New Report Highlights Increasing Global Significance of Intellectual Property

Tax HelpOn November 14, 2011, the World Intellectual Property Organization (WIPO) released a report, entitled “World Intellectual Property Report 2011 – The Changing Face of Innovation.” The report emphasizes the growing importance of intellectual property (IP) rights with respect to the development and growth strategies of companies worldwide.

Overall, the WIPO report describes key trends in the innovation landscape, including the increasingly open, international and collaborative character of the innovation process; the causes of the increased demand for IP rights; and the rising importance of technology markets.

Below are a few noteworthy finings detailed in the report:

  • Demand for IP rights has grown significantly. Demand for patents has risen from 800,000 applications worldwide in the early 1980s to 1.8 million in 2009. Similarly, trademark applications worldwide increased from 1 million per year in the mid-1980s to 3.3 million in 2009.
  • Well-functioning patent institutions perform the essential tasks of ensuring the quality of patents granted and providing balanced dispute resolution. However, unprecedented levels of patenting have put these institutions under considerable pressure. Many patent offices have seen growing backlogs of pending applications. In 2010, the number of unprocessed applications worldwide stood at 5.17 million. The choices patent offices make can have far-reaching consequences on incentives to innovate.
  • Knowledge markets based on IP rights are on the rise. Evidence suggests that firms trade and license IP rights more frequently. Internationally, royalty and licensing fee revenue increased from USD 2.8 billion in 1970 to USD 27 billion in 1990, and to approximately USD 180 billion in 2009 – outpacing growth in global GDP. New market intermediaries have emerged, such as IP clearinghouses and brokerages.
  • While high-income countries still dominate global R&D spending, Low- and middle-income economies have increased their share of global R&D expenditure by 13 percentage points between 1993 and 2009. China accounts for most of this increase – more than 10 percentage points – propelling China to the world’s second largest R&D spender in 2009.
  • Innovation is increasingly international with a sharp increase in the share of peer-reviewed science and engineering articles with international co-authorship and a rising share of patents that list inventors from more than one country.
For more information, the full WIPO report is available 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 a powerful defense of your unique ideas.

[+/-] read more...

Friday, December 2, 2011

Tech Giants Send a Message to Congress Regarding SOPA

Tax HelpAs we noted last week, the Stop Online Piracy Act (SOPA) has generated backlash from many leading technology companies. While SOPA is aimed at shutting down foreign websites that pirate copyrighted material created by U.S. firms, its critics argue the bill goes too far.

Internet giants, including Yahoo, Google, Facebook, and Twitter, have banded together to fight the legislation. Just last week, the companies sent a letter the judiciary committees of both the U.S. House and Senate.

The companies state that although they support the stated goals of the legislation to combat foreign “rogue” websites, “the bills as drafted would expose law-abiding U.S. Internet and technology companies to new uncertain liabilities, private rights of action, and technology mandates that would require monitoring of web sites.”

Given these concerns, the technology companies have asked the committees to “consider more targeted ways to combat foreign ‘rogue’ websites dedicated to copyright infringement and trademark counterfeiting, while preserving the innovation and dynamism that has made the Internet such an important driver of economic growth and job creation.”

The letter also expresses particular concern that SOPA will undermine the provisions of the safe harbor provisions of the Digital Millennium Copyright Act. The provision protects Internet companies that act in good faith to remove infringing content from their sites.

The letter states, “Since their enactment in 1998, the DMCA’s safe harbor provisions for online service providers have been a cornerstone of the U.S. Internet and technology industry’s growth and success. While we work together to find additional ways to target foreign ‘rogue’ sites, we should not jeopardize a foundational structure that has worked for content owners and Internet companies alike and provides certainty to innovators with new ideas for how people create, find, discuss, and share information lawfully online.”

The full text of the letter is available here. As promised, we will continue to provide updates on the status of SOPA as new developments arise.

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 a powerful defense of your unique ideas.

[+/-] read more...

Thursday, December 1, 2011

Are U.S. Companies the Most Innovative?

Tax HelpAccording to a new report, U.S. firms are indeed among the most innovative. The report, published by Thompson Reuters, examined a series of patent-related metrics to come up with a list of the top 100 leaders in innovation.

As the report notes, “Patent activity has always been an indicator of innovation.” To get a better picture of how global companies stack up, the report measured patent volume, success, global reach, and influence.

Of the top ten innovators, six were American companies. They included: 3M Company, Advanced Micro Devices, Inc., Alcon, Inc., Analog Devices, Inc., Apple, Inc., and Applied Materials, Inc.

The United States was also particularly dominant in semiconductors and related industries. U.S. firms, such as Intel and Qualcomm, account for 40% of the firms on the list. Japan represented 27% of them (where all of Asia only accounts for 31%).

One of the most surprising results is that India and China do not rank very high, despite the fact that China has seen rapid growth in patenting. In fact, the country is poised to file the most patents worldwide in coming years.

Most of those patents are only being filed in China, says analyst Bob Stembridge of Thomson Reuters IP Solutions, and it may be too early for their effects to be reflected in the report’s measures of innovative success.

The report team plans to update its findings in coming years. The current report can be viewed in its entirety here.

How We Can Help

Whether it’s prosecuting your patent, defending against infringement, or enforcing your rights in court, we have the skills and expertise to protect your innovation.

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 a powerful defense of your unique ideas.

[+/-] read more...

Trademark FAQ: Selecting the Proper Format

Tax HelpIf you have done any research into filing a trademark application, you know that there are some decisions to make. One of the most important choices is the depiction of your mark.

Every application must include a clear representation of the mark you want to register. This representation is used by the Trademark Office to file the mark in the USPTO search records. In addition, it is also used to print the mark in the Official Gazette and on the registration certificate.

Two possible mark formats are used: (1) standard character format; or (2) stylized or design format.

Standard Character Format

The standard character format should be used to register words, letters, numbers, or any combination thereof, without claim to any particular font style, size, or color, and absent any design element.
In general, you should submit a standard character drawing if:

  • All letters and words in the mark are depicted in Latin characters;
  • All numerals in the mark are depicted in Roman or Arabic numerals;
  • The mark includes only common punctuation or diacritical marks; and
  • The mark does not include a design element.
Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. For instance, you may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters.

Stylized Format

The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or words and/or letters having a particular stylized appearance that you wish to protect.
In most cases, companies select the stylized format because they want the mark to include color or a design/logo.

Other Considerations

Finally, it is important to note that the two types of mark formats cannot be mixed in one mark. Therefore, it is important to ensure that you do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format.

In addition, once filed, you cannot make a material change to your mark.

How We Can Help

Of course, this post provides only a brief overview of the advantages and disadvantages of the two trademark formats. Before undertaking a trademark registration, it is often advisable to consult with an experienced intellectual property attorney.

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 a powerful defense of your unique ideas.

[+/-] read more...