Apr012011
Understanding Trademark Registers

The underlying philosophy of trademark law is to prevent consumer confusion in the marketplace by ensuring that the marks identify the source of goods or services. Consumers can therefore rely on a particular company’s goodwill, including expectations regarding standards of product quality and customer service. Trademarks rights are derived through use in commerce-not through registration-although federal registration provides certain important legal advantages. The owner of a valid trademark can prevent others from using that mark or a confusingly similar one for the same or related goods or services in commerce.

• Principal and Supplemental Registers

In order for a trademark or servicemark to be protectable, it must be capable of serving this source identification function. In other words, it must be distinctive of the goods or services in questions rather than descriptive of them. Federal trademarks are registered on either the Principal Register or the Supplemental Register. The Principal Register is reserved for marks that are either inherently distinctive or have acquired distinctiveness. The Supplemental Register is for marks that are not distinctive but are capable of acquiring distinctiveness through use in commerce. Although in theory marks can be applied for on the Supplemental Register, applicants always request registration on the Principal Register. If the examining Trademark Attorney rejects the application for lack of distinctiveness, the applicant may request to register the mark on the Supplemental Register. This provides certain limited rights for the applicant, but does not provide the owner with the right to prevent others from using the mark in commerce.

Some marks are considered to be inherently distinctive. These may be immediately added to the Principal Register (assuming they meet all of the other legal qualifications). Others are so highly descriptive that they are incapable under any circumstances to function as a trademark, and thus cannot be added to either register. These are known as generic marks. And some marks fall into the merely descriptive category. These are marks that are capable of serving as source identification in the future, but are not yet distinctive enough to qualify. Merely descriptive marks can be added to the Principal Register only after the owner is able to demonstrate acquired distinctiveness (sometimes also referred to as secondary meaning) – that is, even given the descriptive nature of the mark in question, it has achieved sufficient notoriety for consumers to associate the mark with source. To prove that your mark has acquired distinctiveness, you must show "substantially exclusive and continuous use in commerce." The time period for achieving this is typically five (5) years; however, the actual time period required can be more or less depending on the specific circumstances, such as the nature of advertising campaigns and sales. A trademark examiner must be reasonably convinced that consumers associate your mark with the source of goods or services rather than the description thereof.

For more details regarding descriptiveness and distinctiveness, read Choosing a Trademark.

• Use-Based and Intent-To-Use Applications

As mentioned above, trademark rights arise through use in commerce – not registration. (Although registration provides very important legal advantages). The Trademark Office, however, offers a method for applicants to establish priority in future trademarks, for a limited period of time (up to three years), before actual use in commerce. These are Intent-To-Use (ITU) applications.

ITUs allow businesses to determine the validity of a potential trademark before expending a large amount of resources that are often required to develop a product or service around that mark. Because they are examined according to the same criteria as a Use-Based application, businesses will have a degree of certainty that their mark can be registered once it is used in commerce. The filing date of the ITU is the constructive date of first use for purposes of establishing priority, thereby negating any potential intervening rights that could be established by a third party.

If the mark in an ITU application is not inherently distinctive, it cannot be registered at the Trademark Office and will be abandoned. In other words, there is no provision for a non-distinctive ITU registration on the Supplemental Register.

• Tying It All Together

An application for a mark that is both inherently distinctive and in use in commerce will be immediately added to the Principal Register after examination and resolution of any outstanding legal issues at the Trademark Office. Use-Based marks that are not inherently distinctive can be amended to the Supplemental Register, and later upgraded to the Principal Register under Sec. 2(f) if the applicant can adequately demonstrate acquired distinctiveness. Marks filed via ITU applications will be registered on the Principal Register if they are inherently distinctive. These can later be upgraded to Use-Based marks by filing an Allegation of Use. If a mark filed in an ITU application is not inherently distinctive, it cannot be registered at the Trademark Office, and will therefore become abandoned.

This is depicted in the following diagram.

Marks may be considered not inherently distinctive but capable of upgrade to the Principal Register via Sec. 2(f) if they are found to be merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily merely a surname. There is no difference in the legal rights granted for any Use-Based mark listed on the Principal Register based on the route that the mark took to get there.

Mar272011
2nd Annual New Technology, Small Business & Inventors Conference
March 4-5, 2011 at the Free Library of Philadelphia

Patent Attorney Jeff Maday organized and hosted the conference in conjunction with the Nikola Tesla Inventors Club and the American Society of Inventors. We brought together entrepreneurs, inventors, technology enthusiasts and legal professionals for a two-day event focused on:  NEW PRODUCT DEVELOPMENT, INVENTIONS AND GREEN TECHNOLOGY. The conference was fun and informative, and we are already looking forward to next year!

read more on the event page>>>

Nov222010
Choosing a Trademark

For any new business venture or new product launch, creation of a strong trademark (or servicemark) is one of the best tools at your disposal to distinguish your goods and services in the marketplace. When selecting a trademark, however, there are some important considerations that you should be aware of.

Specifically, it is important to keep in the mind the proper function of a trademark – that is, to identify the source of goods or services in the marketplace. The primary justification for this doctrine is not centered, as you might imagine, on business and industry. Rather, it is to assist consumers – that is, to prevent consumer confusion in the marketplace. By labeling products as originating from a particular business organization, consumers can rely on that organization’s goodwill, including expectations regarding standards of product quality, customer service, etc. For businesses, trademarks are an important tool for establishing good will in the marketplace, and also for facilitating product advertisements.

Trademark strength is determined according to a sliding scale of "descriptiveness." In a nutshell, the more descriptive the mark (i.e., the more the mark describes the goods or services in question), the less likely the mark is to identify source rather than product. There is often a desire to select a mark that has a close relationship to the goods or services offered; however, this is not always the best policy from a trademark law perspective. The scale is divided into five categories from ‘weak’ to ‘strong.’ There is no hard distinction between categories, which are often determined through the use of a subjective fact-based analysis for each mark under review.

1. Generic marks are considered to be the ultimate in descriptiveness, and as such, can never fulfill a source identification function. In other words, a trademark will not be granted for generic marks under any circumstances. Example: POTATO brand potatoes, PETROLEUM brand gasoline, etc. It is improper to preclude competitors from identifying their products by monopolizing the common terms for goods or services.

2. Descriptive marks convey an immediate idea of the ingredients, qualities, or characteristics of the goods without amounting to a generic description thereof. Example: AMERICAN AIRLINES, PARK N FLY for airport parking lots. Descriptive marks are not inherently distinctive. They cannot be protected absent a showing of acquired distinctiveness proving that consumers associate the mark with the goods or services offered. (They can be registered on the "Supplemental Register" until such time as proof of acquired distinctiveness is available.)

3. Suggestive marks require imagination, thought and perception to reach a conclusion as to the nature of goods or services. Example: COPPERTONE for suntan oil, GREYHOUND for bus service. These are inherently distinctive and capable of registration a priori.

4. Arbitrary marks are words that have meaning in English language, but not as applied to the mark. Example: APPLE for computers, IVORY for soap.

5. Fanciful marks are coined words that do not exist in English language. Example: PEPSI, ADVIL, REEBOK. Arbitrary and fanciful marks are the strongest marks, and they enjoy the widest scope of protection.

Trademark categories are subject to change.

Trademarks can theoretically last indefinitely so long as they continue to serve a source identification function. The mark can be lost, however, if the public uses it in a generic sense. Examples of once protected trademarks that no longer identify source are: THERMOS, CELLOPHANE, TRAMPOLINE, and ESCALATOR. Examples of marks that are in danger of falling victim to "genericide" are XEROX and KLEENEX.

It is also possible for a mark to go generic and then later be recaptured from the public domain. For example, shortly after the development of the sewing machine, SINGER was used generically by the public to refer to these devices. Since it is not used today in a generic fashion, it is again capable of acting as an identification of source.

How should I select my Trademark or Servicemark?

Your mark will need to be at least "descriptive" to qualify for trademark protection. Proving acquired distinctiveness, however, may not an easy or inexpensive endeavor, and you may need considerable evidence to that effect before obtaining trademark protection (although this can often be achieved after five years of continuous use in commerce). For new business ventures, therefore, it is generally recommended to select a mark that is suggestive, arbitrary, or fanciful.

Often, suggestive marks achieve a good balance between business or advertising interests and trademarkability. They convey certain ideas, feelings, or emotions about your business, but are still eligible for trademark protection without the need to prove acquired distinctiveness. Examples might include BACCHUS for spirits, or SWIFTFOOT for courier services. Remember the sliding scale. If the Trademark Examiner places your mark into the "descriptive" box, he or she will require proof of acquired distinctiveness prior to registration. If it is less important to you to have a mark that conveys certain characteristics of your business enterprise, an arbitrary or fanciful mark may be the best choice. These are also the strongest marks, and will be given a relatively wide scope of protection. A little brainstorming may be in order to develop the best trademark for your particular business enterprise.

Marks that are "primarily merely a surname" are also not protectable, so avoid these and apply some creativity. Acronyms, however, often are protectable. The test for trademarkability is based on the overall impression of the mark as a whole.

You can consider using a foreign term in your trademark. Be careful, however, because foreign terms may be literally translated to show descriptiveness or genericness. Examples of inappropriate trademarks include VINKA for wine (vinka is the Polish word for wine), TAMARI for soy sauce (a common type of soy sauce in Japan), and SAPORITO (meaning "tasty" in Italian) for sausages. Nevertheless, a carefully selected foreign word may be appropriate and may also convey an exotic theme to your customers.

When possible, use your trademark as an adjective rather than a noun or verb.

To state the obvious, you do not want to compromise the validity of your protected trademarks. Once you have your trademark, try not to use it as a noun or verb (in other words, as a description of your goods or services.) Rather, use it in a source identification context. This can be accomplished by using the mark as a modifier of the generic term, i.e. KLEENEX brand tissues, rather than as the description of the goods themselves, i.e. KLEENEX as a generic name for tissues. Don’t XEROX your documents; use the XEROX copy machine (assuming you are trying to protect the XEROX trademark.) The way in which you incorporate your trademark into advertising material have will impact its interpretation by consumers, so display your trademark in a way that will strengthen, rather than diminish, it.

Conclusion

Be aware of the source identification function of trademarks and make your selection appropriately. Avoid generic marks like the plague, and in most case also, descriptive marks. Consider participating in a brainstorming session to come up with a mark that is both creative and protectable, and may also promote certain positive characteristics of your business. Finally, consider consulting a trademark attorney who can provide advice concerning the potential category of descriptiveness that your mark will likely fall into. Your attorney can also perform a clearance check to see whether your mark is different enough from others in existence to have a good probability of trademark protection. In many cases, it is beneficial to analyze potential marks at an early stage of the business development process, before engaging in activities that require additional expenditures that are affected by the mark that you choose. This includes activities such as the creation of molds and product labels or the development of marketing materials. A little forethought and attention to detail upfront will often pay dividends to your business enterprise down the road.

Jul272010
Bilski update
The United States Supreme Court has issued its highly anticipated ruling in a case concerning business method patents. This is an update to a blog that I composed in December, 2009, which reviewed the Appellate Court decision. The position adopted by the Supreme Court is consistent with the approach that I suggested in my previous blog.

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May202010
Philadelphia Inventor's Symposium
The Philadelphia Inventors Symposium, hosted by Jeff Maday and the Nikola Tesla Inventors Club, was held on Saturday, May 15, 2010, at Drexel University. A lot of great information of interest to inventors and enterpreneurs was presented. We are tentatively planning a 2nd annual symposium, and hope to make it even bigger and better than this year's event!

Feb252010
Trademark Law Doctrine: A Cornucopia of Possibilities
This article explores a variety of devices that may serve as a trademark (or related instrument) due to its source identification function.

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Feb092010
Patenting "Higher Quality"
Inventors have occasionally approached me with an idea that they have developed for a device similar to one in existence but of a “higher quality.” Poor quality can take on a variety of meanings depending on the context, for example, knobs that fall off, pins that break, electrical plugs that are prone to breakage or short-circuiting, etc. Often, it is the inventor’s frustration with a particular device that leads to an idea for an improvement.

Unfortunately, “quality” in and of itself is not patentable. It may be that the device you are using would be perfect for its application if only it were built a little sturdier. The patent office, however, is not in the businesses of determining which particular invention is “better” than any other. It is only concerned with the rules of patentability. A claim for a device just like “xyz” but with a pin that doesn’t break so easily is not going to fly at the patent office.

But don’t drop your idea just yet! Higher quality can often be claimed indirectly.

You need to find a specific, physical alteration that inherently improves the quality of a given device. If this improvement can be distinguished from the prior art as novel and nonobvious, a patent will likely be granted for your idea. Your frustration with the existing state of the art can be addressed in your patent application. The fact that there were pre-existing problems with the prior art devices that you were the first to solve will help convince an examiner that your idea is nonobvious.

In addition, you should consider the marketability aspects of your improvement. Manufacturers do not always want to improve their products. Improvements may lead to increased costs of production, retooling requirements, and possibly fewer repeat sales (if the new product is more durable). Of course in the right situation, improved products can provide a considerable marketing advantage. The key to the analysis is to momentarily set your frustration aside and evaluate your idea objectively. When patentability meets marketability, the field is fertile for commercialization.

Feb022010
Philadelphia Inventor's Symposium
Patent Attorney Jeff Maday of Maday Patent Law, PLLC, in conjunction with the Nikola Tesla Inventor's Club, will be hosting an upcoming Inventor's Symposium in Philadelphia, Pennsylvania. We are planning to have a dozen or more speakers addressing a variety of topics that are of interest to inventors and entrepreneurs. The mix of speakers will include patent attorneys and agents to discuss issues related to patent law, members of inventor assistance organizations, and independent inventors who will be sharing their success stories. The symposium is tentatively planned for late spring/early summer 2010. Check back for more details.

Update 3/5/10: The inventor's symposium is still in the planning process. Most of the speakers have been confirmed, and a date/venue will be scheduled soon.

Dec302009
In re Bilski: Altering the Landscape of Subject Matter Eligibility for Process Patents
The Court of Appeals for the Federal Circuit adopted the "machine-or-transformation" test for determining whether process claims contain patent-eligible subject matter. The holding may raise the bar for patent eligibility, although the precise application of this approach is unclear pending future court precedent.