Trademark FAQ: Does a Trademark Last Indefinitely?

A 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.

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Are You Planning to Hire an Invention Promoter?

Unfortunately, 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.

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The Patent Pipeline: A Look at the Numbers

For 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.

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New Report Highlights Increasing Global Significance of Intellectual Property

On 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.

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Tech Giants Send a Message to Congress Regarding SOPA

As 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.

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Are U.S. Companies the Most Innovative?

According 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.

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Trademark FAQ: Selecting the Proper Format

If 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.

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