NOTE: my heartfelt thanks to my longtime patent attorneys for their valuable input to this all important section.

David Becker of Becker, Runkle, Laurie, Mahoney and Day in Placerville Ca. http://www.lawyers.com/California/Placerville/Becker-Runkle-Laurie-and-Newman-83150-f.html  and,

Thomas R. Lampe in Sacramento , Ca. http://www.smallentity.com/patent-attorney-directory/profile/Thomas-Lampe/22454

When it comes to marketing a new product, the more avenues of protection available the better.  The ideal product will be able to be protected by:

1. Filing a provisional patent as soon as possible after conceiving any invention worth pursuing
2. A disclosure document filed with the U.S. Patent and Trademark Office.
3. Trade secrets as to methods of production.
4. Trade secrets as to contents.
5. A utility patent to cover its structure and or functions.
6. A design patent to cover its overall shape.
7. A trademarkable name and logo.
8. Copyrights on written procedures, plans, instruction books, safety and test results, artwork etc.
9. Foreign patents, trademarks, etc. in countries you plan to trade with.
10. A licensing agreement for unpatentable “know-how” and “intellectual property”.

 

On Patents:  The following is my opinion, based on my years of working with my clients, their questions, and my own experience with inventing, patenting, trademarking, copyrighting, marketing, and licensing my own products.  I am not a patent attorney:

The United States has become a “first to file” Country. We used to be a “first to invent”  Country which meant that if an inventor could prove through having the proverbial and in my opinion overrated bound notebook with a description of the idea and signed and dated by the inventor and a witness who purported to have knowledge in that field of expertise, the inventor could overturn a patent filed after the date of INVENTION listed in the notebook.  In my personal opinion, I am glad we changed to First to file since now we do not have to worry about filing for a patent and paying the fees only to have the patent disputed by some yokel who had a notebook and had already invented it, but we had no way of knowing before paying.

As with many things in business there are some good things about both methods, but I prefer first to FILE. Lots less quibbling. Especially in the software arena.

As far as the patent office is concerned, the primary purpose of a patent, and one which many innovators are unaware of, is to disclose the intellectual property, thus informing and teaching the public in order to build on the knowledge disclosed, and thereby furthering economic growth.  A patent grants certain rights of restriction to the inventor in return for the disclosure of the invention to the public.

A patent is not a right to success, it is not a right to manufacture, or even a right to use.  Basically, it is the right to prevent someone else from practicing your invention without compensating you, for the term of the patent. However, you must still have enough money to fight such a battle.  This is why filing for a provisional and getting the product to market immediately is USUALLY a good way to go , because the real winners are usually those who can get the product to market FAST and thus make enough dollars to fight off would be combatants or “claim jumpers”

Most of my clients, who have not yet filed for a patent, always ask me how to decide whether to apply for a patent or to proceed without one.  My answer is, you should always do a cost versus benefit analysis to decide whether to apply for a patent or not.  Once you have established how many people are likely to buy your product during its life cycle, and you have a good idea what the WHOLESALE price will be, take the number of prospective buyers times the wholesale price, times 3% (an average royalty figure), and you will have a rough estimate of your possible income from the product if you licensed it.  Of course if you market it yourself and hit a home run, then you quickly build the war chest that may be necessary to win patent battles.

The number you come up with had better well exceed the cost of the patent which usually STARTS around  $5500.00 and (way) up from filing to issuance for utility or “regular” patents and considerably less for design patents.  It is then up to you to decide whether you should file for a patent on your product or technology.  That is why you have to evaluate an idea carefully, using this system, BEFORE you go to see the patent attorney.   The great Will Rodgers once said “I never met a man I didn’t like”.  The very few patent attorneys who take after him have a similar motto: “I never met an idea I didn’t like”.  The reason for that is they get paid well for every patent they file, and it really doesn’t matter to some of them whether you make any money or not.  A patent attorney’s job is not to assess an invention’s chance for commercial success, and in most cases they are not qualified to do so.  The bottom line, is that it is really your responsibility to decide whether to file or not.   In my years of consulting to inventors I have personally seen many patents issued which never would have had a chance at commercial success.  YOU must take the initiative, objectively evaluate your ideas, and file for patents on only those ideas that have a good potential for commercial success.

Patents should not be looked at as goals in themselves. Inventors have a tendency to think of the patent as a “badge of achievement”, but the real measure of achievement is money in the bank.  That is why I like to think of the patent as a marketing tool.

A patent only gives you the right to preclude someone else from making, using or selling your product without compensating you.  THE PATENT ITSELF DOES NOT PROTECT YOU FROM ANYTHING.  IT DOES NOT STOP ANYONE FROM MAKING YOUR PRODUCT.  IT MERELY GIVES YOU A LICENSE TO SPEND YOUR OWN MONEY TRYING TO PREVENT AN ALLEGED INFRINGER FROM MAKING YOUR PRODUCT WITHOUT PAYING YOU.  Here is an analogy I use to explain this to my clients:

When you obtain a patent, you obtain a handgun to use against infringers.  The problem is, you are given an empty handgun.  You still need bullets and you need gunpowder.  The bullet is your attorney; the gunpowder is your money.

If you have a skilled attorney or law firm, you have an armor piercing bullet.  If you have a mismatched or less than skilled attorney you have a rubber bullet.  A well written patent by a skilled attorney adds value to the invention.  A poorly written patent by a less than skilled attorney is basically worthless in court.  Riordan’s Law States:  Never take a less-than-skilled lawyer to a skilled lawyer fight.  Seek out skilled patent attorneys and be sure their skills and specialties match the invention’s requirements.

NOTE:  You should always ask to review their references, or review patents which they have completed.  If they tell you “That’s confidential”, tell them “baloney, all issued patents are in the public domain”.  If they still won’t produce patents for you to review, you probably have the wrong attorney and you may want to look elsewhere.

If you have a lot of money, you have a lot of gunpowder.  If you have only a little money you have little gunpowder.  Riordan’s law states:  Never take a small quantity of gunpowder to a skilled lawyer fight.

Ideally, with an armor piercing bullet and lots of gunpowder($$$$) you can take one or more “shots” at your infringer and make him bleed dollars.  Beware, however, the rubber bullet and little gunpowder combination.  Usually there’s just enough powder to push the rubber bullet out of the barrel onto the floor where it “grovels about smartly” until its energy is spent.  (Read : nothing happens, you lose, and the little money you did have is gone).

In the patent game, you get only as much protection as you can afford.  As a result, a patent becomes powerful protection in the hands of a large well-funded company.  However, the same patent may be almost useless as a “real world” form of protection for an individual or small businessperson.  The “little guy” may have to cough up between $15,000 to $25,000 in “gunpowder” to “take the first shot” with the handgun he has purchased.  For this reason the small businessperson must regard a patent not so much as a form of real protection but rather as a “bluffing tool” much the same as a person pointing an empty handgun at a burglar to scare them away.  Sometimes it works!  Sometimes it doesn’t.

First and foremost though the small businessperson or individual must think of the patent as a marketing tool.  Without a patent having been applied for, on a new product, a small businessperson has little chance of selling or licensing the product to a company capable of making and selling the product.  Most companies simply don’t want to talk with you unless the product is at least in the patent pending stage.  Some companies won’t talk to you at all until you actually have an issued patent.  Therefore, the patent is used as a marketing tool by the “little guy” until the product is sold to the “big guy”.  Only after the sale to the large company does the patent become a formidable form of protection.

Additionally, the patent is used as a marketing tool by entrepreneurs who wish to produce their product themselves and then sell their product to retail stores and through other channels of distribution.  The term “patent pending” stamped on your product opens doors to retail stores and mail order catalog houses, since they then perceive the product as one which will probably not be immediately “knocked-off” by a bunch of other companies making “me-too” products.  Without a patent, many of the larger retail chain stores will be skeptical of carrying the product unless you sign an “indemnification agreement” which states that you will provide the store with a lawyer if the store is sued for infringement.  If you have a patent issued or pending, many stores will waive the indemnification agreement, because they believe, falsely, that your patent automatically protects them.  The value of the patent as a marketing tool must be carefully weighed against the cost of the patent to determine whether the benefits will justify the cost.   Unless a product is a fad-type product, I have found that in most cases, when the potential for success looks good, it is worth it to file for a patent.  This is now particularly true of the Provisional Patent.

A person or company can file for a patent for two totally opposite reasons, either as a SHIELD (defensive weapon), or as a SWORD (offensive weapon).  For example if you want to simply protect your idea, you would file for a patent as a shield.  However, if you wish to act as an aggressor toward one of your competitors, you may want to file for a patent as a sword.  For example, company A comes out with a product which is going to help them take market share from their competitor (company B), company B may choose to retaliate by modifying one of their existing products to compete directly with company A.   In this case, company B files a patent as a sword, sticks a patent pending sticker on their product and immediately takes it to market.  Company B might even be fully aware that they have little or no chance of the patent ever issuing.   However, company B files for the patent strictly to confuse company A and to give themselves some breathing room to get their product on the market, before company A can check the claims in the patent.  It also gives company B time to sell the product before company A can notify them to cease and desist.   Usually, the company with the most money wins this kind of duel.   When the duel is between a large company and an individual, unless the case is blatant infringement, the chances are good that the big company will win one way or another.  For example, a large company with offices in different parts of the country, can file law suits against you, in cities on the opposite coast from you, and cost you so much money in attorney’s fees and travel expenses that it becomes financially impossible for you to do battle with them, even if you are right.  I have personally watched this happen.

The very first step you should take when you think of a new idea that you believe may be of value is to go online to the US Patent office and file for a provisional patent.  This provides far more protection than the old way of writing it down in your “sewn and bound” inventors notebook, and have the page signed and dated by a witness who understands the invention.  It is easy and cheap to file a provisional especially on line. Go to www.uspto.gov

You can then learn all about patents and trademarks and decide which route you would like to take. In our business it usually takes us three to four days to write a provisional patent, include the drawings and file the document on line. . . . As soon as you are done and you pay the fee, the website will print out your official copy.  For a Government agency it is truly a commendable site.

Update as of 11-21-2012  This was sent to me by a friend in Silicon Valley .  The quote is attributed to “Good Morning Silicon Valley”.
“David Kappos, head of the United States Patent and Trademark Office, says those who criticize the patent system as broken should “give it a rest already.” According to Ars Technica, Kappos said Tuesday that the America Invents Act (PDF), which was signed into law last year, should help get rid of low-quality patents — and that people should “give it a chance to even get started.” Kent Walker, general counsel for Google — whose Android mobile operating system is the target of many a patent battle, and which has been vocal about its disdain for “bogus” patents — wrote in Wired this week: “We need to refocus the patent system to support innovators and the ability to deliver on great ideas, and not on the ability of lawyers to game the system.”

Before filing for a patent, you should conduct an Internet search for similar products using the Google® search engine at http://www.google.com or use a “secure” search engine like ixquick.com at www.ixquick.com.  Simply go the site and type in keywords for the type of product you plan to market.  Lets say it is a Frisbee® type flying disk with LED lights which glow in the dark.  Type in “Frisbee with lights” and you will immediately see competing products.  Google also features a “tab” at the top of its browser window that allows you to select “images.”  If you choose images and type in your key words, you will see photos of any similar products found.  Amazing stuff.  Make use of it!  If you do not have a computer, go to the library and use theirs.  The research librarians can teach you how to use the search engines in short order.

The next step is to conduct a patentability search to be sure your idea is not infringing on an existing patent, and to be sure that the idea has not been patented by another which means a patent may be denied.  If your idea appears to be a good one , which has the potential for a strong on-going market, I strongly suggest you have a patent attorney or patent agent do a professional patent search for you.  Searches usually run $750.00 and up depending on the complexity of the device.

You may choose to do a patent search yourself.  If so, you can visit either the Patent and Trademark Office in Arlington Virginia, or one of the patent depository libraries located throughout the U.S.  For information on the location of the library closest to you, contact the Patent and Trademark Office at the address listed below.  You can also do an on-line search at http://www.uspto.gov .  Once you are ready to start your search, here are the steps you should take:

 

1. Determine how your product is “classified” for patent search purposes.  You do this by looking up the direct name of your product in the alphabetized INDEX TO THE UNITED STATES PATENT CLASSIFICATION which is available on line, can be viewed at most patent depository libraries, or you can purchase a copy of the book for your own use, for thirty seven dollars, Item # 903-006-00053-6 from:

 

The United States Department of Printing  (on the web at http://www.gpo.gov/)

Superintendent of Documents

P.O. Box 371954

Pittsburgh, PA  15250

Telephone  (202) 512-1800

 

If you cannot find your product under its direct name, try looking under the way it works, the principal it is used for, or its method of use.

 

2. Once you have the name of the product category, for search purposes, you now need to look up the numerical listing of your main class and subclass(s).  You find these in the MANUAL OF CLASSIFICATION.  Choose the subclass that best describes your invention.

 

3. Once you have the numerical subclass which you think fits your product, check the CLASSIFICATION DEFINITION BOOK to be sure that the description accurately matches your product.

 

4. Next, locate your local Patent library at (http://www.uspto.gov/products/library/ptdl/locations/index.jsp) go to the library and the librarians can help you search the microfilm (or the on-line listings). Note: I ALWAYS SEARCH ON LINE)  This is a compilation of all the patent numbers which have been granted a class and subclass from 1836 through present.  Note that the on-line listings only go back a few years so you will not have access to the earliest patents and on-line searches have limitations that may render them inadequate for meaningful searches to reveal your points of difference. This is up to your personal preference.  Follow the instructions provided at the library for using the microfilm system.  While searching for patent numbers that have been issued in your class and subclass, you may come across numbers which are followed by the letters “X” or “U”.  These letters indicate a patent that is not the exact same thing you are searching for, but may be related in some way.  It is wise to write down those numbers also, and check them out.  When you are done with this step you should have a list of patent numbers which you will review to see if they are the same as your idea.

 

5. Review the classification of patents in the Official Gazette .  (http://www.uspto.gov/news/og/patent_og/index.jsp)  Every two sheets of the gazette show every patent granted for an individual week.  Find the main class in the bold print and then go down the column looking for your subclass and write down any patent numbers which fit the subclass you are searching.

 

6. Review the copies of the Gazette which contain the patent numbers you have found, and read the abstracts of the patent.  Remember that the abstract does not detail all of the claims, so if you find that an abstract sounds at all like your idea, circle that patent number on your list and go on to step 7

 

7. Review the complete copy of each patent number you have found that relates to your subclass.  Read the abstract, then read the claims.  Take copies of any patents that appear similar to yours for inclusion in your patent application. If you cannot find a copy of a patent that may be important to your search, contact the patent office in Washington D.C. and they will send you a copy for a modest fee.

 

Keep in mind that a visit to http://www.uspto.gov can show and allow access to issued patents.  However, this website has certain limitations and is not suitable in most cases for providing meaningful search results when accessed by a novice.  While a search you do yourself is not always complete, it may turn up a patent similar to yours and save you the cost of having a patent attorney find it.

Don’t despair immediately if your search turns up a similar patent.  One of my Clients had a search done which turned up exactly the same thing he had invented.  He came to me feeling terrible.  I looked at the patent, which had been issued only recently, and within a few phone calls I located the patent holder.  The inventor was an older gentleman who, for health reasons was unable to pursue the sales effort.  The inventor immediately licensed my client to become the sole distributor of the product, for a fixed royalty of ten cents apiece, and my client avoided the cost and delays of the whole patent process.

Another option is to take the offensive, and try to design around the other party’s patent, and get your own patent.  Yet another option is to simply make and sell the product anyway and gamble that the patent holder won’t catch you, or won’t have enough money to beat you if and when you did get caught.  Personally, when I find out another person has beaten me to an idea, I just drop it and go on to the next one, which I believe is the morally right thing to do.  I mention these last two options only in the interest of letting you know that corporations do not come “complete with morals”, and you may find one of them trying to do this very thing to you or your company at some time in your career.

Some companies have been known to sign a licensing agreement to make use and sell an invention, take the product to market, and then challenge the validity of the patent in court.  That’s about as low as you can get, but remember, it’s all business to most corporations.  The corporation is not sentimentally attached to the inventor or the product.  The corporation sees only the business side.  If a court then finds, FOR ANY REASON, including YOU, the licensor, NOT HAVING ENOUGH MONEY TO FIGHT THEM, the company can then break the licensing agreement, stop paying royalties, and, continue to make and sell the product.  Yes its sad, but true. My attorneys have suggested to me that I ALWAYS INCLUDE A CLAUSE, IN EVERY LICENSING AGREEMENT, WHICH STATES THAT THE LICENSING AGREEMENT IS AUTOMATICALLY TERMINATED ON THE DATE THAT THE LICENSEE CHALLENGES, OR THREATENS TO CHALLENGE, IN ANY WAY, LICENSOR’S PATENT, TRADEMARK, TRADE SECRETS, OR ANY OTHER INTELLECTUAL PROPERTY PROVIDED TO THE LICENSEE BY THE LICENSOR, OR COMPETES IN ANY WAY WITH LICENSOR WITHOUT COMPENSATION.

Your agreement should ideally include a clause which covers unfair competition in the event the patent is found invalid by a third party.  Many licensees will object to paying the full royalty if the patent is found invalid by a third party, but it never hurts to include it in the agreement and use it as a bargaining chip.

Be aware that many if not most, patents which are pending will not show up on searches.  Due to a recent change in the law certain but not all pending applications are subject to publication after eighteen months from filing.   Whenever you file for a patent you are taking a gamble that a patent may issue to someone else directed to the same invention, even while yours is pending.  Many people are paid top dollar to think of ideas for new products, both in this country and in foreign countries.  Many other creative individuals think of inventions “out of the blue” and file for patents on all types of products, every year, hoping to sell them, or license them, to companies capable of marketing them.  If any of them receive a patent on the same type of product or technology, at best you may be up against expensive litigation or, you may be forced into an unwanted and costly licensing agreement.  At worst, you may be forced to “cease and desist” from making, selling or practicing the invention which means you lose all rights to manufacture and or sell the product, and lose all monies you have invested in the product.  (You may be able to deduct the expenses from your gross income for income tax purposes . . .  Oh the joy!).

You have the option of filing for a patent yourself, or having a patent attorney or patent agent file it for you.  Again, if you think your idea has real merit I would pay the money and have a patent attorney prepare your application.  I have had my attorney file every patent I have ever applied for, when I get past the provisional patent stage and I will continue to do so.  Plain and simple, it’s their business and they know it better than you do as a layperson.  The Patent Office actually discourages the practice of inventors preparing and filing their patent applications, but if you feel you must, file yourself, I recommend you purchase David Pressman’s book entitled “PATENT IT YOURSELF” which you can find at http://www.patentityourself.com/ it is published by NOLO press of Berkeley Ca and is available at most book stores.  I have been a speaker at invention seminars several times with David Pressman and he is a true gentleman, excellent speaker and all around good guy. Another good, inexpensive source of good information on patents, which incidentally contains an inventors assistance center and all of the forms you need to apply for a patent, is General Information Concerning Patents  and you can reach them on line @ http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp

Patents can be denied for any number of reasons.  When a patent is denied, you lose the gamble.  You lose the money you have paid the attorney, because they don’t guarantee you’ll get the patent and they don’t give refunds.  However, don’t panic when you receive your first rejection notice.  The overwhelming majority of all patent applications are initially rejected by the patent office.  The most common grounds are that the patent is “obvious”.  The joke here is that for those of us who continue to pursue our patent applications, THE MAJORITY OF PATENT APPLICATIONS DO EVENTUALLY ISSUE AS PATENTS.  Why then do most of them initially get rejected?  Wags say they are all initially rejected in hopes that some will not return, thus lightening the workload of the patent office.  Every patent I have ever applied for has been initially rejected.  In essence this is sort of an adversarial process with the attorney trying to get as broad a protection as possible for the inventor as he or she can and the patent office trying to prevent an applicant from getting coverage broader than the USPTO thinks is deserved, which typically results in some sort of compromising back and forth.  In some cases where the patent office denies your patent, you can go back with proof of commercial success and ask them to reconsider.  Commercial success may stem from evidence that sales of the product have replaced or exceeded sales of competing products, evidence that your product can be sold for more than the existing products, evidence that you have licensed the product, evidence that your competitors are copying your product, or evidence of people in the trade commenting that your product is head and shoulders above the prior art.  The moral is keep at it until you are absolutely sure the rejection is final.

In light of the above, should a small businessman or product developer go to the expense of filing for a patent?  The answer is a qualified “yes”.  The qualification is that the product must have a projected life cycle which is long enough to justify the expense of the patent, or you must have a good chance of selling or licensing the product and the patent to another entity.

For the small business person it’s always tough trying to decide whether to spend the money on buying an empty handgun, or spend it on marketing and promotion!  If you can afford both, great!   If you can afford only one or the other, bear in mind that Riordan’s Law States:  Whoever sells the most product the fastest usually wins the game.

There are two different types and often confused types of patents:

A UTILITY patent covers the structure or function of a product, machine, tool, plant, device, chemical composition, toy, vehicle, etc.

A DESIGN patent covers a new unobvious design, shape, or form, for any tangible thing where the design is non-functional, and is part of and non-removable from the thing, e.g. the hole in the center of a LIFE-SAVER candy.

Generally speaking, a utility patent is more valuable than a design patent, since it is harder for competitors to “write around” structure or function than it is design.  The ideal situation is to have your product covered by both utility and design patents.  A design patent can be a valuable tool to help you stop foreign competitors from sending “knock-off” products into the United States, because customs agents can readily recognize a design infringement from your documentation.  It is much harder for them to make a determination of a functional infringement.  If the customs agents decide the “knock-off” appears too similar to your product’s design patent, they can confiscate the competitor’s product and destroy it, or better yet, turn it over to you at no charge.

ALWAYS put the words “patent pending” on your prototypes and packaging as soon as the patent application is filed, to give notice to anyone who sees the product or packaging that the product is patent pending.  Once the patent is granted, the marking should be changed to “Protected by U.S. patent” or “Patented” and should have the patent number clearly marked on the product label or better yet molded in if the product is plastic.  Some people refrain from putting the actual patent number on the product because it can make it easier for competitors to go to a patent depository library, and pull a copy of the patent, and find out what all of their claims are.  There is no requirement to put the actual patent number on the product.  However, failure to mark the prototype or product with the actual patent number can lead someone to believe it may not be protected and invites infringement.

If your product is granted a utility patent on its structure or function, the full term or life of the patent is now 20 years from the filing date.  If your product is granted a design patent on its design, the full term of the patent is 14 years.  If your product is granted a utility patent, you must remember that “maintenance fees” must be paid in the six month period following the issuance, then 3, 7, and 11 years after the patent issues.  Failure to pay the patent maintenance fees will result in the patent office declaring the patent expired, and then it is available to anyone.  Six month extensions can be obtained but require an additional surcharge.  Your patent attorney will usually alert you to the due dates, but don’t count on it.  To be safe, keep track of the dates yourself.  The laws that govern this are:  35 U.S.C. 41 and 37 CFR 1.362(g) which provide that “if the required maintenance fee and any applicable surcharge are not paid in a patent requiring such payment, the patent will expire at the end of the 4th, 8th, or 12th anniversary of the grant of the patent depending on which maintenance fee was not paid.”

ON TRADEMARKS:  A trademark may be a word, symbol, design, or combination of word and design, a slogan, or even a distinctive sound which identifies and distinguishes the goods or services of one party from those of another.  Used to identify a service, it can be called a service mark.  Normally, a trademark is the word or design that appears on a product or its packaging, while a service mark is the word or design that is used in advertising to identify the owner’s services.

While patents dwindle in value as they age, trademarks can become more valuable the longer they are used.  A U.S. court recently forced a Spanish company to stop selling a candy in the United States which was similar to a LIFE-SAVER candy, even though the patent had expired in the early 1930’s.  The shape of the candy has been a trademark of Life Savers for over 75 years.  The longer such a mark is in use, the stronger the brand name recognition becomes, and the more “goodwill” value the trademark has.

If you have an idea for a trademark, you will need to search the name or logo to be sure no one else is using it.  If you will be making and selling your product in only one state then you can file for a state trademark.  If you will be selling the product in more than one state you should file for a federal trademark.  Either way, you will have to search to be sure no one else is using the proposed mark.  I always have my patent attorney conduct my trademark searches, but you can do it yourself, or the Trademark Register will do it for you for approximately $60.00 (you can contact them with the info provided below).  If you want to do it yourself, here are a few tips:

1. locate a copy of THE TRADEMARK REGISTER OF THE UNITED STATES which lists over 800,000 currently registered trademarks in use, in both U.S. and International Classes, and gives you all of the ones listed from 1881 through present.  You can find it at most patent depository libraries or you can purchase one to have on hand.  The last time I checked the book cost about $650.00  and is available through the USPTO.  Trademark searches can also be done on line at http://uspto.gov but there are more limitations with an on-line search.

 

2. If you find the mark you have in mind listed in the directory, you must then jot down the class, date of registration, and registration number, and go to the OFFICIAL GAZETTE of that date and you will find the mark which will show the company who owns it, their city and state, what the mark looks like, what it is being used for and its first date of use.  For absolute up-to-the-present date searches, you must review the Gazettes through the present week.

 

3. Trademark rights arise from use of the mark.  A federal registration is not needed for a trademark in order for a trademark to have protection, and a trademark may be used without obtaining a registration.  In fact, you must use the mark on goods that have been shipped or sold before you can receive a federal trademark. However, you can file an application based on an “intent to use.”  You should give notice to people that you are using your mark as a trademark by placing the letters TM after the mark on your products and packaging.  After federal registration, you should use the traditional R with a circle around it to indicate it is a registered trademark.

 

A federal trademark registration used to last for 20 years, but congress recently cut that down to 10 years, the same as some state trademarks.  Both federal and state trademarks can be renewed forever, as long as the mark is remaining in use.  Be aware that with respect to federally registered trademarks, between the fifth and sixth year after registration, you must file an affidavit stating that the mark is currently in use in commerce.

ON COPYRIGHTS:  A copyright is a form of protection given by the laws of the U.S. to the authors of literary, dramatic, musical, artistic, and other intellectual work.  The owner of a copyright is granted by law exclusive rights to print, reprint and copy the work, sell or distribute copies of the work, transform or revise the work, and the right to perform and record the work.

I strongly suggest you use a copyright to protect your drawings, test results, safety documents, and any and all of your plans, artwork, packaging, instruction booklets, etc.  Basically, my advice is to copyright any documents or artwork which you do not want to see used by your competition, OR HAVE USED AGAINST YOU IN ANY OTHER MANNER at some later date.  All you need to do to notify others is to mark your work with a C, with a circle or parenthesis around it, followed by your name and the date as in this sample:  ©Jim Riordan  2003.

In order to be eligible for statutory damages, the work must be registered before the infringement, or within three months of publication.  The term of copyright protection runs the life of the author plus 50 years for “works not made for hire” and for 75 years from publication or 100 years from creation, whichever is shorter, for “works made for hire”.

Copyright registration is inexpensive  (about $30.00) and easy to obtain.  For free registration forms, contact:

Registrar of Copyright

Copyright Office

Library of Congress

Washington, D.C.  20559

Telephone  (202) 707-2100

Website: www.copyright.gov

Again, please remember that I am not a lawyer or patent attorney.  I have presented all of the above only as my personal observations over many years of working with inventors, the USPTO and Patent attorneys.