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INTELLECTUAL PROPERTY LAW FOR NON-IP ATTORNEYS
Grant Clayton- Clayton, Howarth & CannonDave Johnson, Tim Nichols- Workman Nydegger
• A trademark or service mark is any word, name, symbol, phrase, device or combination that is used or intended to be used to indicate the source of a seller’s goods and/or services, and to identify and distinguish the seller’s goods and/or services from another’s.
What is a trademark?
• FANCIFUL
– ex. GOOGLE or VERIZON
• ARBITRARY
– APPLE (computers) or KAYAK (website)
• SUGGESTIVE
– TRAVELOCITY (travel services)
• DESCRIPTIVE
– PRETZEL THINS (pretzels)
• GENERIC– TRAMPOLINE (originally a trademark of the Griswold-
Nissen Trampoline & Tumbling Company)
Strong
Weak
Picking a Mark
• Use Based Application– Description of goods and
services– Pick your class(es)
• $325 per class
– Date(s) of first use– Specimen– Declaration
• Using the mark
• Not aware of others– Same mark, same goods or
services
– Opposition period
• Intent to Use Application– Description of goods and
services– Pick your class(es)
• $325 per class
– Declaration• Bona fide intention to use
• Not aware of others
– Within 6 months• Statement of Use
– Opposition period
Application Process
“I have a trademark registration, I own the mark”
Misconception #2: Registration=exclusive ownership
Feeb
Shoes
Coats
Online retail store services
PantsBackpacks
Misconception #2: Registration=exclusive ownership
“I have a trademark registration, I can use the mark”
Misconception #3: Registration=exclusive right to use
Third party begins use
Date of first use
File trademark application
Registration approved
PRIORITY IS KEY!
Misconception #3: Registration=exclusive right to use
• A patent is a property right, granted by the government, which allows the owner of the patent to prevent others from making, using, selling, or importing the invention for a limited period of time.
What is a patent?
• The claimed invention must be directed to one of four patent-eligible subject matter categories
– Process: an act, or a series of acts or steps– Machine: a concrete thing, consisting of parts– Manufacture: an article produced from raw or
prepared materials and giving to such materials new qualities, properties, forms, etc.
– Composition of matter: any compositions of two or more substances and any composite articles
What can be patented?
• The claimed invention cannot wholly embrace a judicially recognized exception
– Laws of nature– Physical phenomena– Abstract ideas
What can be patented?
• Design Patent
– 15-year term (from issue)– Ornamental designs for articles
of manufacture• Shape/configuration; and/or• Surface ornamentation
What can be patented?
• Patentability- the ability of an invention to satisfy the legal requirements for obtaining a patent.
• Infringement- the unauthorized making, using, selling, or offering for sale of a patented invention within the United States, or importing into the United States a patented invention during the term of the patent.
Patentability vs. Infringement
There are time limits for filing a patent
• Strict and unforgiving time deadlines apply to establishing your client’s patent rights
Protecting your client’s patent rights
Foreign patents must be pursued at roughly the same time as a U.S. patent
• If you wait until you get your U.S. patent, it will be too late to apply in other countries
Protecting your client’s patent rights
What you file is as important as when you file
• A patent application is a complex document that describes an invention in legal and technical terms
Protecting your client’s patent rights
Not all patents are created equal
• It is important to do some due diligence to find out what a patent really stands for
Protecting your client’s patent rights
If your client buys a patent, record the assignment document in the USPTO
• If an assignment is not recorded within 3 months after signing, the assignee stands at risk of having its rights subordinated to a subsequent bona fide purchaser or lender acting without notice of the assignment. See 35 USC 261, Para. 4
Protecting your client’s patent rights