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Patent FAQ's

1. What is a Patent?
2. Can I get a patent on my invention?
3. What are the standards for an invention to be patentable?
4. What Are the Steps for Obtaining a Patent?
5. Do I have a time limit in which to file a patent from when I start selling or offering to sell my product or showing or using it publicly? What does the term statutory bar mean?
6. Can someone else file after me and prevent me from obtaining a patent even though I filed first? Should I keep an inventor's notebook?
7. Can I do my own patent search?
8. Do I have to inform the Patent Office of the patents found in a patent search?
9. Can I file my own patent application?
10. What is a patent attorney?
11. Can I sell my invention without obtaining a patent?
12. People have told me that my invention has probably been done before, should I forget about obtaining a patent?
13. Does a U.S. Patent protect my invention outside the U.S.?
14. What is a plant patent?
15. What is a design patent?
16. What is a provisional patent application?
17. What is a Utility Patent?
18. What does "Patent Pending" mean?
19. When does patent protection begin?
20. Can I sell my invention to a company without a patent application or patent?
21. Can I get any sort of protection by writing down my invention and mailing it to myself (i.e. a poor man's patent)?
22. I am an employee, what should I know about my patent rights?
23. I am an employer, what should I be doing to protect employees' inventions?
24. I would like to get a patent on an existing product upon which the patent has expired, can I do this?
25. Are patents renewable?
26. I want to get a patent on an idea that has been out these, but no one ever filed for a patent on it. Can I do this?

What is a Patent?

A patent is essentially an agreement between the government and the inventor. Within the patent the inventor explains how to make and use the invention and the best way known to the inventor for carrying out the invention. In return, the government grants the inventor the right to prevent others from making or using the claimed invention for a period of time. The period of time will vary depending upon different factors, such as the time it takes to get the patent granted, but is in the range of 17 years.

It is the “claims” at the end of the patent that define what the inventor is allowed to prevent others from doing. The claims must be specific enough to cover the invention, but should be broad enough to encompass different ways competitors may attempt to avoid (or design around) the patent. The claims are the most important reason for obtaining the assistance of a skilled and experienced patent attorney.

Patents are different from trademarks and copyrights. Click the links to understand what trademarks and copyrights cover.

Can I get a patent on my invention?

Volumes have been written on this subject, but essentially, you can obtain a patent on any new, novel and non-obvious product or process. Improvements to existing products are patentable, as well as business methods, computer software, methods of making products, and methods of using products.

Additionally, special categories of patents, called plant patents and design patents, are available to protect new plant types and to protect the ornamental appearance of new product designs.

What are the standards for an invention to be patentable?

First, the invention must be useful.

Second, the invention must be new or “novel”. An invention is novel as long as there is no prior patent, publication or existing product that contains all the elements of your invention, or which, if combined, as suggested by the prior art itself, make the invention obvious.

Lastly, the invention must not be “obvious”. If it would be obvious to modify an existing product, or if it would be obvious to combine two or more existing products, to come up with your invention, then your invention is “obvious” and not patentable. If it is not obvious to modify a prior product or if it is not obvious to combine prior products to come up with your invention, then your invention is not obvious and is patentable.

What Are the Steps for Obtaining a Patent?

Generally, the process for obtaining a patent can be broken down into four primary steps:

First, the inventor can have a search done at the U.S. Patent & Trademark Office to see if anything, the same or similar to the invention, has been done before. From the results of the search, a patent attorney can give you an idea of whether you patent will receive broad or narrow coverage, or whether your invention is patentable at all. See below for an explanation of what it means to have broad or narrow coverage. This is an optional step. There is no requirement that the inventor perform a patent search prior to the filing of an application, but the search can help determine whether meaningful patent protection is available and aids in drafting a specification that meets the patent statue's requirements.

Second, a patent application is prepared and submitted to the U.S. Patent & Trademark Office with the filing fee. The patent application contains a full description of the invention and concludes with a number of claims that define the inventor’s legal right to exclude others from the invention. The claims can be compared to the metes and bounds on a deed to a piece of land. The claims define what belongs to the inventor and describe the invention. However, they cannot be so broad as to cover things that have been done before, but should not be so narrow as to allow others to easily design around your invention.

After the application is filed with the U. S. Patent & Trademark Office, the application is assigned to a patent examiner. The examiner will review the application and conduct his or her own patent search to make a determination of the patentability of the claims filed in the application. The examiner writes up his or her opinion of the patentability of the claims in a communication called an office action. Typically, in the first office action, the examiner rejects some or all of the claims of the patent application. At this point, the inventor must respond with an argument that the patent examiner has misconstrued the invention or the patents relied upon in the rejection, or, if the rejection is legitimate, the inventor must narrow the patent claims. This “prosecution” or “examination” phase can continue for as long as the examiner makes new rejections or continues in his previous rejections, until the examiner makes the rejection “final.” Generally, the differences with the examiner can be resolved within 1-3 office action responses.

When a resolution is reached with the examiner, a Notice of Allowance will be issued and an issue fee and publication fee will have to be paid. The U. S. Patent & Trademark Office will issue the patent within about three months from the payment of the issue and publication fees. The patent is enforceable for 20 years from the date of filing of the application. However, to maintain the patent in force, maintenance fees must be paid by the end of 3½, 7½, and 11½ years from the issue date of the patent. If the maintenance fees are not paid, the patent will lapse.

When the patent expires, or lapses due to a failure to pay a required maintenance fee, the patent becomes part of the public domain, and no one can be stopped from using the claimed invention.

Do I have a time limit in which to file a patent from when I start selling or offering to sell my product or showing or using it publicly? What does the term “statutory bar” mean?

You do have a time limit in which to file a patent application. If you wait too long you may be subject to a “statutory bar”, which essentially means that the rules no longer allow you to file a patent application. In the U.S., the grace period for filing a patent application is one year from the date that:

• the invention was patented or described in a printed publication in this or a foreign country by anyone (including yourself) more than a year before your filing date OR

• the invention was in public use or on sale in this country more than one year prior to the date of your patent application filing date in the United States (by you or anyone else).

Keep in mind that if you are interested in obtaining foreign patent rights in your invention, almost all foreign countries have no grace period at all.

Can someone else file after me and prevent me from obtaining a patent even though I filed first? Should I keep an inventor's notebook?

In the United States, the first to invent, not the first to file an application, is awarded the patent. The U. S. Patent & Trademark Office assumes that the first filer is the first to invent. However, if two people claim the same invention, the U. S. Patent & Trademark Office may declare an interference in which a proceeding is held in which it is determined who invented the invention first. This is a very complicated proceeding where, very generally, each inventor attempts to show his invention date through corroborating evidence.

If the other person claims their invention differently from yours, but the patent examiner has determined that their patent application renders your invention old or obvious, you may “swear behind” their application if you can show that you invented before the other person’s filing date. If you cannot show evidence of your invention before the other’s filing date, the other person’s patent or patent application can prevent you from obtaining a patent.

Both of these situations give good reason for you to keep very details records of your activities. Keep a record of your activities such that a person with average skill in the area of your invention could read and understand it. Include critical information about your invention, such as sketches, printouts, photographs, blueprints or other important information. You should keep a record as you go along, rather than try to recreate what you did later. The notebook should preferably be bound, entries should be written in ink and the notebook should not have blank pages. The notebook should have pre-printed numbers on the pages by the printer. Each page should be dated by you and witnessed by two other people who are not co-inventors and do not have an interest in the invention. Each person should state, in writing, that they have read and understood your notes and they should sign and date their statements. Also, keep a record of your failures as well as your successes.

Can I do my own patent search?

You can do your own search by searching the U.S. Patent & Trademark Office’s online database at www.uspto.gov/patft/. However, an experienced patent attorney will be able to formulate a search that may find more patents. Additionally, an experienced patent attorney may consider patents you would reject, as being important to the patentability of your invention. If you do your own search, remember to print out copies of the patents you view.

Do I have to inform the Patent Office of the patents found in a patent search?

Yes. Every applicant has a duty of candor to inform the Patent Office of any information that may be pertinent to the examination of the application. This duty of candor is an on-going duty, and lasts until the patent has been allowed. Such information includes patents and other publications, as well as any existing products. Failure to inform the Patent Office of such “prior art” can cause your patent to be invalidated. You should inform your patent attorney of any information you may have so that he or she can determine if it needs to be provided to the Patent Office.

Can I file my own patent application?

You can file your own patent application. However, it is advisable to seek the assistance of a knowledgeable and experienced patent attorney. The reference book used by patent examiners and patent attorneys for the practice and procedure for obtaining a patent has over 2500 pages and the process is filled with traps and pitfalls. However, if you are interested in investigating acting as your own patent attorney, these pages and the U.S. Patent & Trademark Office’s Inventor's Assistance Center may provide some useful information.

What is a patent attorney?

A patent attorney is an attorney at law who is licensed by the U.S. Patent & Trademark Office to represent inventors before it. Only those who are licensed by the U.S. Patent & Trademark Office can represent inventors (other than someone representing him or herself) seeking a patent. Ensure that anyone you speak to is licensed by the U.S. Patent & Trademark Office.

A patent attorney usually has a degree in engineering or a pure science (i.e. Biology, Chemistry, Computer Science, etc.). As attorneys at law, they are also licensed to practice law in at least one state.

Additionally, “patent agents” may represent individuals in patent matters before the U.S. Patent & Trademark Office. Patent agents usually have a degree in engineering or a pure science but are not licensed to practice law. Patent agents may not give legal advice regarding infringement, patentability, patent validity or other legal matters handled by the courts.

Can I sell my invention without obtaining a patent?

Yes, but you cannot stop others from copying your invention and selling it as well.

People have told me that my invention has probably been done before, should I forget about obtaining a patent?

No. Unless the person can tell you what they have seen that is like your invention, do not be discouraged by the advice of non-patent attorneys. Without a thorough search of the prior art, no one can “guess” that your invention was previously invented. Unless that person can point to a specific product that incorporates your inventive concept, no person can tell whether or not an invention is new without performing a search of the prior art.

Does a U.S. Patent protect my invention outside the U.S.?

No. Patents are national in scope, and in order to protect yourself in foreign countries, you must obtain patents in the countries in which you want protection. Polster, Lieder attorneys can help you in obtaining patents in foreign countries.

What is a plant patent?

Plant patents can be obtained to protect new varieties of plants that have been asexually reproduced. “Asexually reproduced” means that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

What is a design patent?

Design patents cover the ornamental appearance of a product rather than the functionality or structure of the product. Design patents are less expensive to obtain than utility patents, but last only 14 years from their issue date. Because a design patent covers only the ornamental appearance of a product, a design patent cannot be used to prevent others from making the same type of product but with a different appearance. There are no maintenance fees for design patents.

What is a provisional patent application?

A provisional application is a basic filing that discloses the invention. A provisional application must meet all the requirements of a regular or non-provisional application, but can be filed without claims. A provisional patent application is not examined or even read by anyone at the Patent Office. A provisional patent application expires one year after it is filed. To receive a patent based on the provisional, you must file a non-provisional (i.e. “normal”) patent application that claims “priority” to the provisional application within one year after the filing date of the provisional application. The non-provisional application receives an effective filing date of the provisional for everything disclosed in the provisional application. Because provisional applications are not reviewed by the U. S. Patent & Trademark Office, there is no such thing as a “provisional patent”, only a “provisional patent application”.

A inventor would file a provisional instead of a non-provisional application if:

1. the inventor wants to keep patent costs low while attempting to find a market for the invention;

2. the inventor wants to get an early filing date quickly; or

3. the early years of the invention will not be as profitable as the later years. This is because the expiration of the resulting patent will be measured from the filing date of the later-filed non-provisional application, not the filing date of the provisional application. If the inventor waits the full year before filing his non-provisional application, the inventor is essential giving up one year of term off of the front of the patent term in exchange for an extra year on the end of the patent term.
    

What is a Utility Patent?

A utility patent is a “standard” patent for an invention, i.e. not a design patent or a plant patent. When people think of patents, they are generally thinking of utility patents.

What does "Patent Pending" mean?

“Patent pending” means that the person who has placed the “patent pending” marking upon the product has filed a patent application with the U. S. Patent & Trademark Office which they believe, when issued, will cover some aspect of the product upon which they have placed the marking. A person who marks a product with “patent pending” has no legal right to exclude others from making the same product. However, competitors may avoid copying a product that is marked “patent pending” due to possibility that they may be stopped from making the product at some time in the future. This is particularly true where there are high startup costs to making the product. It is unlawful to mark a product with the legend “patent pending” if no application is filed.

When does patent protection begin?

Your patent is not enforceable until it is issued by the Patent Office. However, unless non-publication is requested at the time the application is filed, patent applications are now published 18 months after their effective filing date. If the claims in the issued patent are substantially identical to the claims in the published application, you can collect damages from an infringer equal to a reasonable royalty from the date of publication or date of infringement, which ever is later, to the date of issuance of the patent.

Can I sell my invention to a company without a patent application or patent?

While that is possible, a better approach is to have your potential buyer sign a nondisclosure agreement. Most companies refuse to sign non-disclosure agreements and require you to have an application on file before they will even talk to you.

Can I get any sort of protection by writing down my invention and mailing it to myself (i.e. a poor man's patent)?

You obtain no patent rights by mailing yourself a letter containing a description of your invention. Because the letter is self-serving and not corroborated, it is poor evidence of conception of the invention. The U. S. Patent & Trademark Office does maintain  Document Disclosure Program that is excellent evidence or proof of conception of an invention. However, you should be aware that the Document filed under this procedure does nothing to obtain any sort of patent rights and does nothing to protect your invention from the statutory bars to obtaining a patent.

I am an employee, what should I know about my patent rights?

Many companies require their employees to sign agreements that state the employee will sign over to the employer any inventions they make on the job or within the scope of employment. These agreements are binding, although many states have laws that affect the allowable scope of these agreements, preventing the company from obtaining the rights to patents that are outside of your scope of employment and done “off the job.”

If you have not signed such an agreement, but arrived at the invention using your employer’s time and/or materials, you may own the invention, but your employer may have a non-transferable “shop right” to use the invention without payment of a royalty to you. If you have not signed an agreement and made the invention with your own time and materials, you may own the invention and not be subject to a shop right.

In certain instances, it is possible that your employer owns your inventions made within the scope of your employment even if you did not sign a written agreement. You should contact an attorney to resolve the ownership status of inventions made within the scope of your employment.

I am an employer, what should I be doing to protect employees' inventions?

First, you should have every employee sign an agreement that requires them to assign to the company their inventions made within the scope of their employment. Many states have specific requirements for these agreements and you should contact a patent attorney.

Next, you should have appropriate forms for employees to disclose their inventions to you. Many times employees have goods ideas about improvements to your products or the way they are made, but there is no formal process for these ideas to make their way up the chain of command. Consider a financial award for employees to submit new ideas. Many companies will give a small reward for non-trivial disclosures, a larger award if a patent application is filed and a larger award if a patent is actually granted.

Can I obtain a patent on an existing product upon which the patent has expired?

No. Once a patent has expired, the public is free to make and use that invention forever. Further, you may not obtain patents to products that you did not invent. If, however, you modified the product, you may be able to obtain a patent to the improvements to the product.

Are patents renewable?

No, patents have a fixed term and are not renewable. Congress can extend the life of patents and have done so in some specific situations.

I want to get a patent on an idea that has been out there, but no one ever filed for a patent on it. Can I do this?

No. Even if someone never filed for a patent application upon a product that would have been patentable, you may not file a patent application for the product. First of all, you would not be the inventor, and could not honestly sign the declaration that must be submitted with the application. If, however, you modified the product, you may be able to obtain a patent to the improvements to the product.

Trademark FAQ's

1. What is a Trademark?
2. What is a Service Mark?
3. What is a Trade Name?
4. How long does a trademark registration last?
5. What are the various types of trademarks?
6. What is a common law trademark? Do I have to register my trademark to have rights?
7. What is a state-registered trademark?
8. What is a federally registered trademark?
9. I have filed my papers for incorporation or for an LLC or for a fictitious name registration, does that give me trademark rights?
10. How do I obtain a federal trademark?
11. What do the ^®, ^TM or ^SM symbols mean?
12. Can I file my own trademark registration?
13. Are some marks better than others for serving as trademarks?
14. I have the unqualified right to use my name as a trademark, right?
15. Is there any way I could lose my mark even though I have continued to use it?
16. What is trade dress? Can I get a trademark on the shape of a product?
17. What is the difference between a design mark and a word mark?
18. Can a sound be a trademark?
19. Can a color be a trademark?

What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Also, things other than words or designs, such as sounds, smell, color, product configuration and product packaging can be trademarks if capable of designating the source of the goods or services with which it is used. The color pink as used on fiberglass insulation by the Owens-Corning Company, the famous NBC chimes for the NBC Broadcasting Co., and the shape of the classic Coca-Cola bottle are examples of such other marks. In short, a trademark is anything that the public will associate with the maker of the goods upon which it is used.

Trademarks are different from patents and copyrights. Patents protect inventions. For more on patents click here. Copyrights protect original works of authorship (computer code, songs, books, sculptures, movies, etc.). For more on copyrights click here.

What is a Service Mark?

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this FAQ, the terms "trademark" and "mark" refer to both trademarks and service marks.

What is a Trade Name?

A trade name is the name of a company. If the trade name is used to identify a product or service, then the trade name is also a trademark or service mark. However, if the trade name is used only as a company name and is not used to identify a product or service, then the trade name is not a mark. For example, the company name or trade name Apple Computer is also a trademark. However, Geoffrey, Inc. which owns the TOYS "R" US stores is only a trade name. Because it is not used to identify its Toys "R" Us stores, the name Geoffrey is not a trademark or a service mark.

How long does a trademark registration last?

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the U.S. Patent & Trademark Office at the appropriate times.

What are the various types of trademarks?

1. common law trademarks
2. state trademarks registrations
3. federal trademarks registrations

What is a common law trademark? Do I have to register my trademark to have rights?

A common law trademark is a trademark that someone has begun using on a product or with a service without registering it. Common law rights in the trademark arise through use of the mark. Common law rights are limited to the places where the product or service bearing the mark has become known, generally, where it has actually been marketed. Therefore, while common law rights provide the user of the mark with some rights, common law marks do not prevent others from adopting the same mark for similar goods or services somewhere else. If the mark is used in interstate commerce, infringement actions can be brought in the Federal Court system

What is a state-registered trademark?

A state trademark registration is obtained by filing proper documents with the secretary of state for the state in which you are registering the mark. A state trademark registration usually gives you rights throughout the state in which you are registering despite the fact that you may only be marketing your product or service in a portion of the state. Therefore, if you use your trademark outside of the state in which you are registering, you must rely upon your common law rights outside that state. Most states require that you actually begin use of the mark in the state before you can register it there.

Oftentimes, people assume that they have filed for trademark rights when they file a fictitious name registration or when they set up a corporation or an LLC with their secretary of state. None of these acts does anything to establish rights in a trademark.

What is a federally registered trademark?

A federal trademark registration provides the strongest protection for your mark. Owning a federal trademark registration provides several advantages:

• constructive notice to the public of the registrant's claim of ownership of the mark;
• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• after five years continued and exclusive use, the mark becomes incontestable to many defenses;
• the ability to bring an action concerning the mark in federal court, where the federal registration is prima facie evidence of ownership and use;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Trademarks can be registered federally if the mark has already been used on goods or services in commerce. An application for a federal registration can be filed even if the mark is not in use if the applicant has a bona fide intent to use the mark on goods or services in the future. However, in such an “intent-to-use” application, a registration will not be issued until use of the mark has begun.

Federal law also requires that the mark be used “in commerce that Congress may regulate.” Generally, this includes state-to-state commerce, commerce with foreign countries, and commerce with U.S. possessions. It also includes intrastate commerce if the commerce has “an effect” on interstate commerce. This is generally an easy criterion to meet. Consult an attorney experienced in trademark matters if you have a single state business and you want to determine whether you can file a federal trademark registration.

I have filed my papers for incorporation or for an LLC or for a fictitious name registration, does that give me trademark rights?

No. Oftentimes, people assume that because they have filed the paperwork to set up a fictitious name, a corporation or an LLC with their secretary of state, that they have registered their mark. However, a fictitious name registration or a corporate or LLC name registration is not a trademark or service mark registration. A separate application must be filed either with the state (in the case of a state registration) or with the United States Patent & Trademark Office (in the case of a federal registration) to register your rights in the mark.

How do I obtain a federal trademark?

First, you should perform a search to determine if others are using the same or similar marks on related goods or services. If others’ marks are too close, you should consider a different mark. See below for information on selecting a mark.

Next, a federal trademark registration application is filed. The application has several parts that need to be completed correctly. Mistakes on the application can be fatal to your application or subsequent registration. The Examining Attorney in the Patent & Trademark Office will do a search to determine if there are any confusingly similar registrations or prior filed applications and if your trademark is generic or descriptive of the goods or services set forth in the application. See below for information on selecting a mark and for an explanation of “generic” and “descriptive” as it relates to trademarks.

If the examining attorney rejects your application, you will need to present arguments to overcome the rejection.

If the examining attorney does not reject your application or accepts your arguments made in response to a rejection, your application will be published in the Trademarks Gazette. Publication starts a 30-day period during which others can file an opposition in an attempt to prevent you from obtaining a registration. Such an opposition can be based on a federal registration, a state registration, or a common law (i.e., unregistered) mark.

After the opposition period expires, the application will, in the case of an actual use application, issue as a registration. In the case of an “intent-to-use” application, a notice of allowance will be issued, and you will have 6 months to file a statement of use or an extension of time to file the statement of use. Up to five 6-month extensions of time can be filed. If, at the end of the fifth extension of time (3 years after the notice of allowance) you still are not using the mark, the application will lapse.

Between the fifth and sixth year after issuance of a registration, affidavits need to be filed to maintain the registration. Your trademark attorney should docket those dates to ensure that the proper documents are filed. Failure to file the required documents will result in the loss of your registration.

What do the ®, TM or SM symbols mean?

"^®" means that the mark is a federally registered trademark.

The ^TM or ^SM symbols mean that the trademark owner is claiming common law trademark rights in the mark and/or that the mark is a state registered mark.

While it is not illegal per se to use the “^®” symbol with a mark that is not federally registered, such use often has consequences that make the use of the symbol at best undesirable.

Can I file my own trademark registration?

You can, but keep in mind that mistakes in the application can be fatal and you may not find out about the mistake until you go to stop someone else from infringing your mark. Also, if the required affidavits and renewals are not filed on time, your registration will lapse. An attorney should docket those dates and remind you years after your registration that the documents are due.

Are some marks better than others for serving as trademarks?

Yes. The touchstone for a trademark is distinctiveness--the mark must indicate to the public a single entity responsible for the quality of the product or the service, NOT what the product or service is. There is a sliding scale of trademark distinctiveness.

Generic marks. Although the term is used occasionally by the courts, it is an oxymoron; if it is generic it is not a trademark. It describes exactly what the product or service is and cannot be registered. For example, the term APPLE is generic for apples, but not for computers. The reason generic marks cannot be registered is simple-- no person should have the right to prevent others from describing what their goods or services are. In this instance, no one person has the right to stop others from calling apples "apples".

Descriptive marks immediately describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, APPLE is descriptive of an air freshener because it describes a quality (namely the aroma) of the air freshener and is not registrable without a showing that the mark has gained trademark significance in the minds of consumers ("secondary meaning"). "Secondary meaning" is acquired through long use or extensive advertising. "Secondary meaning" is presumed to have been acquired if the mark has been used continuously and exclusively for five years. An example of a descriptive mark that has acquired distinctiveness such that it is registrable is THE PASTA HOUSE for restaurant services featuring Italian food. Marks can also be considered descriptive if they are primarily geographic terms, such as MISSOURI BANK or AMERICAN PLUMBING.

Suggestive marks are marks that do not immediately describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Apple is suggestive when used in the mark APPLE JACKS for breakfast cereal and is, therefore, registrable.

Arbitrary and fanciful marks are the strongest trademarks and do not describe or suggest any aspect of the products. Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER). Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).

I have the unqualified right to use my name as a trademark, right?

No, you don't. If someone else has adopted your name as a trademark, you cannot use your name as trademark on similar goods or services. For example, if your last name is McDonald, you do not have the right to start up a restaurant named MCDONALD'S.

Is there any way I could lose my mark even though I have continued to use it?

First of all, you could lose your state or federal registration if you fail to file the proper documents, such as renewals, on time.

Second, you could lose all of your rights in a trademark if the mark becomes generic for your product. That is, if people begin to consider your trademark as describing what your product is, rather than who makes the product, it becomes generic. Examples of two terms that used to be trademarks but became generic are the terms "aspirin" and "escalator". Today, companies still fight to keep their marks from becoming generic, for example ROLLERBLADES is a mark that many people associate with inline skates even though it is the trademark of a single company.

What is trade dress? Can I get a trademark on the shape of a product?

Yes, you can, if the shape has gained significance in the minds of the relevant purchasing public of the product or service such that they identify the product with a single source. Recent court rulings have made it more difficult to obtain a product configuration mark. However, product shapes, like the shape of a classic Coke bottle, are trademarks. If you believe you have a product with a distinctive appearance that the public associates with a single source, you should consult a trademark attorney.

What is the difference between a design mark and a word mark?

A design mark is a mark that incorporates a design element (i.e., a logo). An example of a design mark is Sanyo Fisher’s “BIRD-IN-NOTE” design mark shown below for use with consumer audio and video products.

A word mark is a word either in standard characters or in a stylized font. An example of a word mark is Brown Shoe’s BUSTER BROWN mark for use with footwear.

A composite mark includes both a design element and a word element. An example of a composite mark is Brown Shoe’s BUSTER BROWN and DESIGN mark shown below for use with footwear.

 If you have a composite mark in which the word element is distinctive, the mark can be covered by three registrations: a registration to the composite mark, a registration to the design element of the mark, and a registration to the word element of the mark. If the word element is in a stylized font, a fourth registration could be filed to the word element in the stylized font, although registration of the word mark in block form covers its use in any font or form.

Can a sound be a trademark?

Yes. A sound can be a trademark if is inherently distinctive or has become distinctive in the minds of consumer as representing a source of the trademark owner's goods or services. An example is the NBC chimes.

Click here to hear the mark.

Can a color be a trademark?

Yes. A color can be a trademark if it is inherently distinctive or has become distinctive in the minds of consumers as representing a source of the owner’s goods or services. For example, Owens Corning registered a color as a trademark when it registered the color pink for “fibrous glass residential insulation”.

Copyright FAQ's

1. What Is Copyright?
2. What Is Not Protected by Copyright?
3. What Works Are Protected?
4. I hired an independent contractor to create a website, write software code, etc., do I own the copyright?
5. What is a work for hire?
6. How Long Does Copyright Protection Last?
7. How do I obtain International Copyright Protection?

What Is Copyright?

Copyright is a form of protection to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. The copyright law generally gives the owner of a copyright the exclusive right to do the following:

To reproduce the work in copies;

To prepare derivative works based upon the work;

To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

To perform the work publicly, in the case of certain works;

To display the copyrighted work publicly, in the case of certain works; and

To perform the work publicly by means of a digital audio transmission, in the case of sound recordings.

Copyrights are different from patents and trademarks. Patents protect inventions. For more on patents click here. Trademarks protect words, designs or other things used to indicate the maker of a product or provider of a service. For more on trademarks click here.

What Works Are Protected?

1. Any original work of authorship fixed in a tangible medium of expression, such as:
2. literary works
3. musical works, including any accompanying words
4. dramatic works, including any accompanying music
5. pantomimes and choreographic works
6. pictorial, graphic, and sculptural works
7. motion pictures and other audiovisual works
8. sound recordings
9. architectural works

What Is Not Protected by Copyright?

Several categories of material are generally not eligible for federal copyright protection. These include among others:

• Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded);
• Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents;
• Inventions, ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration; and
• Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, telephone book listings, and lists or tables taken from public documents or other common sources)

I hired an independent contractor to create a website, write software code, etc., do I own the copyright?

You may not own the copyright if you did not specifically agree in your contract with the person or company that you would own the copyright. While an employer does own the copyright in all works created by an employee (called a “work made for hire”), such is not the case when the person is an independent contractor. Therefore, it is essential to get a written assignment of all copyrights generated from the contractor’s work upon the contractor’s hiring.

The difficulty in not owning the copyright, particularly to web sites and computer code, is that you may not make derivative works (i.e. updates) to the site or the code without the author's permission, thus tying you to that person for future work.

In certain limited instances, an independent contractor may not own the copyright. If you find yourself in the position of not having an agreement with your independent contractor that assigns all copyright ownership to you, contact an attorney.

What is a work for hire?

A “work made for hire” is a work prepared by an employee within the scope of his or her employment. Under certain conditions, a specially ordered or commissioned work may also be a “work made for hire”. The copyright in a work made for hire is owned by the employer.

How Long Does Copyright Protection Last?

A work that is created (fixed in tangible form for the first time) today is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's life plus an additional 70 years after the author's death. In the case of "a joint work prepared by two or more authors who did not work for hire" the term lasts for 70 years after the last surviving author's death. For works made for hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

The term of copyrights in older works differs depending upon when the work was created or published. To determine the term of an older copyright, please contact an attorney.

How do I obtain International Copyright Protection?

As the U.S. Copyright Office's Circular 38a, entitled "International Copyright Relations of the United States." states, "There is no such thing as an "international copyright" that will automatically protect an author's writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions. For further information and a list of countries that maintain copyright relations with the United States, request Circular 38a.

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