USPTO Expanding Fast Track Program to Requests for Continued Examination

The U.S. Patent and Trademark Office has announced that it has expanded the Track I program for expedited patent examination to include Requests for Continued Examination (RCEs).

The change is effective immediately, and applies to RCEs filed before, on, or after December 19, 2011.
As detailed in the Federal Register Notice, an RCE application may be awarded prioritized examination status if the following conditions are met:

• The RCE is filed in an original (non-reissue) utility or plant nonprovisional application filed under 35 USC § 111(a) or entered into the national stage under 35 USC § 371.
• The Request for Prioritized Examination is filed via EFS-Web (except in a plant application) before a post-RCE Office Action is issued. The Request for Prioritized Examination may be filed concurrently with or subsequently to the filing of the RCE.
• The application must contain or be amended to contain no more than 4 independent claims and no more than 30 total claims at the time the Request for Prioritized Examination is filed, and the application must not contain any multiple dependent claims.
• The Request for Prioritized Examination must be accompanied by the prioritized examination fee set forth in 37 CFR § 1.17(c) (currently $4800/$2400), the processing fee set forth in 37 CFR § 1.17(i) (currently $130), and if not previously paid, the publication fee set forth in 37 CFR § 1.18(d).
• Only one Request for Prioritized Examination of an RCE can be filed in a given application.

For more information about the Fast Track program, please see our previous post 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 powerful protection for your unique ideas.

[+/-] read more...

[+/-] show only summary...

Trademark FAQ: What Is Dilution?

As we mentioned last week, trademark owners can protect their intellectual property by bringing a trademark infringement action. This post highlights another valuable legal tool—an action for trademark dilution.

Trademark dilution occurs when a third party’s use of your trademark impairs the mark’s distinctiveness. Unlike infringement, it does not matter whether or not the mark is used on a competing product or in a way that is likely to cause customer confusion.

Under federal law, a dilution claim can be brought only if the mark is “famous.” In determining whether a mark is famous, the courts will evaluate the following factors:

• The degree of inherent or acquired distinctiveness;
• The duration and extent of use;
• The amount of advertising and publicity;
• The geographic extent of the market;
• The channels of trade;
• The degree of recognition in trading areas;
• Any use of similar marks by third parties; and
• Whether the mark is registered.

In addition, most states have laws against trademark dilution, which do not require a mark to be famous.

How We Can Help

Of course, this post provides only a broad overview of trademark dilution. If you believe your trademark is being diluted, 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...

[+/-] show only summary...

Patent FAQ: Why Is a Patent Search So Important?

A patent search is often the first step in pursuing a patent, and its importance should not be overlooked. In order to patent an invention, it must be truly novel. The best way evaluate the originality of your idea is to conduct a thorough patent search.

In addition to determining if someone else already has a patent for your idea, a patent search also aids the patent process in several other ways. For example:

• The results of a patent search can help you refine your design.
• The results of a patent search can help ensure that your product does not infringe on other products.
• The results of a patent search are integral to completing the patent application process.
• The results of a patent search can provide an early indication of the likelihood of your patent being granted.

Thanks to technology, it is now possible to conduct a basic patent search on the Internet. You can search the texts or claims of patents for free on the U.S. Patent & Trademark Office (USPTO) website. The USPTO’s system allows you to:

• Search U.S. patents dating back to 1976
• Search U.S. patent applications dating back to March 2001,
• Perform bibliographic searches (to find out the name, title of invention, or patent number) of patents dating back to 1790.

How We Can Help

Of course, this post provides only a broad overview of patent searches. Before embarking on the patent process, it is often advisable to consult with an experienced patent 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...

[+/-] show only summary...

Trademark FAQ: What Constitutes Trademark Infringement?

One of the greatest advantages to owning the rights to a particular trademark is that you can file a lawsuit for trademark infringement. All trademark infringement lawsuits ask one central question—Is it probable, under all of the circumstances, that consumers of the relevant goods will be confused?

More specifically, the use of a trademark in connection with the sale of a good amounts to infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods.

In deciding whether consumers are likely to be confused, the courts will typically examine a number of factors, including:

• The strength of the mark
• The proximity of the goods
• The similarity of the marks
• Evidence of actual confusion
• The similarity of marketing channels used
• The degree of caution exercised by the typical purchaser
• The defendant’s intent

Of course, the weight of each of these factors will vary according to the circumstances of the case. In most cases, the primary consideration is the perception of the consumer.

How We Can Help

Of course, this post provides only a broad overview of trademark infringement. If believe your trademark has been infringed, 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...

[+/-] show only summary...

Trademark “Situation” Hits Abercrombie & Fitch

Jersey Shore’s Mike “The Situation” Sorrentino is suing Abercrombie & Fitch for trademark infringement, false and deceptive advertising, and right of publicity violations after Abercrombie & Fitch sold t-shirts featuring the reality star’s notorious catch phrases. Earlier this month, the popular clothing star fired back, asking the court to dismiss the lawsuit.

Sorrentino’s Allegations

The legal feud began after A&F released a press release that stated that Sorrentino was contrary to the “aspirational nature of the [Abercrombie] brand.” The company further stated that it would pay the reality star a substantial amount of money to stop wearing the brand, an offer Sorrentino disputes.

Despite its stated desire to distance itself from Sorrentino and his on-screen antics, the lawsuit contends that A&F initiated an advertising campaign using Sorrentino’s name, image, and likeness. Specifically, Sorrentino alleges that A&F marketed and distributed t-shirts containing an obvious reference to Sorrentino and his trademarks on its website and in its stores, including t-shirts that containing phrases such as “The Fitchuation” and “GTL…You Know The Deal.”

Sorrentino asserts that these products infringe his registered trademarks for “The Situation” and “GTL” and are likely to cause confusion among consumers who will likely believe that Sorrentino endorses A&F.

Abercrombie & Fitch’s Arguments for Dismissal

A&F argues that the lawsuit should be dismissed because its advertising campaign constitutes parody and, as such, is protected as part of free speech. It further argues that Sorrentino does not own the trademarks at issue.

With respect to the trademarks, A&F claims that the Situation has only filed an application for the “GTL” and “Situation” trademarks. In addition, it contends that the application for “Gym Tan Laundry” has actually been suspended because MTV already owns “Gym Tanning Laundry,” and the US Patent & Trademark Office has deemed they are too similar.

Source: NYMag.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...

[+/-] show only summary...

Patent Hot Topic: Google Awarded Patent for a Self-Driving Car

Creating a lot of buzz, Google has been awarded a U.S. patent for a self-driving car. The intellectual property rights afforded by the patent relate to a method to switch a vehicle from a human-controlled mode into the state where the vehicle is able to drive itself.

Google applied for the patent—Transitioning a Mixed-mode Vehicle to Autonomous Mode—in May, but it was not publicly available until earlier this month. The patent application explains how the car would know when to take control, where it is located, and which direction to drive in.

More specifically, the patent application describes two sets of sensors. The first identifies a “landing strip” when the vehicle stops. According to Google, Google the landing strip could be a mark on the ground, a sign on a wall, or lines or arrows showing where the vehicle should be parked. The first sensor then activates the second set of sensors, which receives data informing the vehicle where it is positioned and where it should go.

“The landing strip allows a human driving the vehicle to know acceptable parking places for the vehicle,” the patent filing states.

“Additionally, the landing strip may indicate to the vehicle that it is parked in a region where it may transition into autonomous mode.”

Although the technology described in Google’s patent application may sound like something from a science fiction movie, the company has been actively testing self-driving cars right here in California. The vehicles combine artificial intelligence with the Google’s Street View maps as well as video cameras and a range of sensors.

A fleet of Toyota Prius and Audi TT models equipped with the new technology have already driven 160,000 miles with limited human input and more than 1,000 miles without driver involvement.

Source: BBC

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...

[+/-] show only summary...

Copyright FAQ: Can a Copyright Be Protected Internationally?

In general, intellectual property rights are territorial in nature, meaning that the protection afforded under U.S. laws does not expand beyond the boundaries of our country. Copyrights are no exception.

For a work to be protected outside of the country of origin, the home country must have a bilateral agreement with the country where the work is used. There are several international copyright treaties, the most important of which is the Berne Convention.

Under the Berne Convention, all member countries must afford copyright protection to authors who are nationals of any member country. This protection must last for at least the life of the author plus 50 years, and must be automatic without the need for the author to take any legal steps to preserve the copyright. The Berne Convention is signed by more 100 countries, offering copyright protection in most industrialized nations.

In addition, the GATT (General Agreement on Tariffs and Trade) treaty contains a number of provisions that address copyright protection in signatory countries. In combination, the Berne Copyright Convention and the GATT treaty allow U.S. authors to enforce their copyrights around the world, and also allow international authors to enforce their copyrights in the U.S.

Source: Standford.edu

How We Can Help

Of course, this post provides only a broad overview of international copyright protection. 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...

[+/-] show only summary...