Frequently Asked Questions

Patents

How can I protect my toy or sporting equipment with a utility patent?

As mentioned above, a utility patent can protect any novel and non-obvious device or process of making a device.  For example, you might think the wheel is certainly not patentable after so many years, but you should check out this patent for a rolling disk, which I recently obtained for one of my clients.  Also, you should check out this other patent that I obtained for a client that protects a wheel and axle combination.  That is, I literally have patented the wheel, and I have patented how the wheel rotates on its axle.  These are just a couple of examples of the great breadth of patent protection that I seek for my games and gaming clients.

How can I protect a game with a utility patent?

A utility patent can even protect just about any novel and non-obvious method, provided that we can couch it in terms of transforming something material in the material world.  Here is an example of a utility patent I prosecuted for another one of my clients in the games and gaming industry to show just what type of scope of protection utility patents can afford a casino-style game method.

In fact, the United States Supreme Court recently gave its stamp of approval for such method patents.  See my discussion on June 30, 2010 in my Games IP Odds and Ins webpage, above, summarizing the Bilski decision and how it will likely affect my games and gaming clients.

What is a patent?

Simply put, a patent is a right to exclude others from doing what you invented. 

There are, however, a number different types of patents.

There are U.S. patents, and there are foreign patents.  U.S. patents are rights granted by the U.S. government and exclude only actions within the United States.  Likewise, patents issued by a foreign government may be enforced only in that foreign country.

Also, in the United States, there are utility patents, and there are design patents.  When most people think of a patent, typical it is a utility patent that first comes to mind.  Utility patents protect the idea or function of an invention.  In contrast, design patents protect the overall appearance of an invention. Properly written, a utility patent application attempts to describe and claim for the inventor his or her invention as broadly as possible.  Similarly, properly written, a design patent attempts to claim the invented design as broadly as possible. What is the difference between a utility patent and a design patent?

A utility patent covers the functional aspects of an invention. A utility patent expires 20 years from the filing date. In 2006, it took approximately 30 months from filing until an examiner came to a decision. The length of time varies depending on the field and complexity of the patent. Examples of things that can be covered by a utility patent are a newly created fabric or a new clasp for a purse.

A design patent covers the ornamental aspects of an invention. They generally issue 8-20 months after filing and are protected for 14 years from the filing date. Design patents often cover long-term fashion items such as shoes, jewelry, and accessories.

My company is expanding and selling our product internationally. Does my U.S. patent protect our rights abroad?

No. You have one year from the time you filed the U.S. utility application to file a PCT application which would generally cover the foreign countries that are members of the World Intellectual Property Organization ("WIPO"). You then have between 20-30 months, depending on the country, to decide if you want to further protect your rights in certain countries by filing individual applications in those countries.  This timeline may be shorter for applications devoted to ornamental features. 

What is the difference between a utility patent and a design patent?

A utility patent protects the idea or function of an invention.  In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product.  The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product. 

Intellectual Property

Intellectual property is any innovation, commercial or artistic, or any unique name, symbol, logo or design used commercially.  Often known as IP, intellectual property allows people to own their creativity and innovation in the same way that they can own physical property.

I am being sued or have received a cease and desist letter. What do I do?

It is important to discuss matters with experienced IP counsel. An experienced IP attorney can find out exactly what IP rights the other side truly holds and can come with up with strategies for your specific situation. In addition, you will want to speak with your insurance carrier to see the range of coverage, which will affect the strategies you will likely pursue. 

Trademarks

A registration has a 10-year term and can be renewed for additional 10-year terms if you prove the mark is still in use for all the goods and/or services stated.  Additionally, between the fifth and sixth anniversary of a mark’s registration, you must file evidence with the PTO showing that you are still using your mark.  If you do not, your registration will be canceled.

Trademarks that have been “federally registered” with the USPTO may use the R-in-a-circle (®) symbol. Trademarks and service marks that have been filed and are awaiting registration from the USPTO may use the TM (^TM) and SM (^SM) symbols respectively.

How do I know if a mark is already taken?
Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.

Is a trademark search necessary?
A trademark search is recommended to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date and to avoid potential liability from a claim of trademark infringement if your mark is the same as or confusingly similar to another mark.
In addition to having a proper search conducted, it is also wise to obtain a trademark search opinion from a competent trademark attorney. Such an opinion can be used as a defense in a trademark infringement suit, which can potentially shield the subsequent user of a registered mark from liability for "willful infringement" as opposed to "innocent infringement." A finding of willful infringement may result in treble damages (that is three times the awarded amount of actual damages) and an award of attorney fees and costs.

Do I have to begin using a trademark before I can apply for federal registration?

No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

I live outside the United States; can I file for federal registration

Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.

What are trademark licensing agreements?

Trademark licensing agreements are one of the most common IP transactions in the fashion industry. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base.

There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.

Someone is selling fake versions of my product. They claim they are within their rights because they have made minor changes to the brand name and look of the product. Do I have a case?

In this scenario, you may raise one or more claims including a claim of trademark infringement. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing.  If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any likelihood for confusion.

Someone is infringing my trademark. Is there any danger if I ignore them?

There are several reasons to immediately seek legal counsel regarding infringers. If you wait too long to sue, you may lose your right to sue because your delay will be seen as a contributing factor in increasing the amount of harm. Courts may also find that you abandoned your trademark by not enforcing its use. Delay can also harm your brand by allowing an inferior product damage the reputation of your trademark and to compete with your sales.

Will my U.S. trademark registration protect me in other countries

No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.

Is it illegal for others to import items into the U.S. with my trademark without my consent?

Yes, it is illegal. Customs will protect trademarks registered in the United States. To obtain protection, a trademark owner must register their trademark with the Customs and Border Protection. Customs may also protect against importation of validly trademarked goods if they were not meant for sale in the United States.

The exception to this is that it is legal for individual users to bring products with your trademark into the United States for their own personal use.

My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck?

You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

Copyright

Why should I register my copyright?

There are three (3) key reasons why you should get a copyright registration:

1. to establish a public record;
2. to be able to file an infringement lawsuit in federal court; and
3. to simplify enforcing your copyright and obtaining higher damages