“Not only do patents provide legal protection against competitive activity, but they also can help generate interest and investment in a company and serve to recognize inventors for their creativity,” writes Walter | Haverfield partner Peter Hochberg in an article for Advanced Manufacturing. Hochberg explains how patents pay off over the long-term and boost a company’s reputation.
Patent applications worldwide have been on a steady rise in recent years, up by nearly eight percent in 2015, according to the World Intellectual Property Organization (WIPO). And here in the U.S., the number of applications grew by nearly two percent that same year. A majority of them come from large companies as independent inventors face a variety of challenges. However, if these challenges can be managed properly, the potential monetary return for independent inventors is worth the investment in time and money.
Before filing a patent, consider the following:
Cradle to grave patent costs:
The costs for filing a patent application, which include government filing fees and fees paid to a registered patent practitioner to prepare and file the application, can run into the thousands of dollars. All utility patents then undergo prosecution where the merits of a patent are often argued before the U.S. Patent and Trademark Office (USPTO). It’s basically a vetting process, which can also cost thousands of dollars. Then, after the patent is granted, it may be challenged before the USPTO or a federal court. The costs of litigation are so prohibitive that oftentimes cases are settled at no small expense. Plus, maintenance fees are due to the USPTO every few years after a patent is granted. Failure to pay them may result in a loss of patent protection. Early involvement by a registered patent practitioner can help you anticipate and/or mitigate some of these costs.
Disclosure to potential competitors:
Many inventors have a desire to sell an invention to a company that manufactures similar products. However, sole inventors may not always have patent (or patent pending) protection before presenting their idea to a manufacturer, and that leaves them vulnerable. The manufacturer may express disinterest, but subsequently file a patent based upon or related to the inventor’s idea. In such cases, the inventor’s remedies are limited. To avoid the problem in the first place, an inventor should present a non-disclosure agreement to the manufacturer as a pre-condition to presenting his/her idea. However, any recovery is often less than what an owner could receive from selling or licensing the rights to the patent or application. Plus, contesting inventorship before the USPTO or a federal court could prove costly, and the outcome of such a contest is uncertain. The more advisable course of action is to avoid a dispute in the first place by filing a patent application prior to any such meeting. Inventors should also consult with a patent attorney before any disclosure of the invention.
Novelty:
Filing a patent application without first determining if the invention is already on the market may be a waste of time and money. Therefore, it’s often advisable for a potential applicant to conduct a prior art search to gain a better sense of an invention’s patentability. A prior art search involves a review of the invention by a registered patent practitioner, an extensive review of prior art, and an honest assessment or estimation of whether the applicant’s invention is in fact new (novel). Depending on the circumstances and nature of the innovation, less exhaustive evaluations may also be performed.
Statutory Bar:
When a patent applicant discloses his/her invention by using, selling, advertising and/or writing about it in publications, it’s often considered known to the general public. Under the American Invents Act, these activities may bar an owner from seeking patent protection if more than a year has passed since the owner used or disclosed his/her invention.
The above points are provided as a landscape of the patent procurement system and not intended to dissuade inventors from protecting their intellectual property rights. Rather, because of the value of the monopoly they offer, patents are worth pursuing for those who have invented truly novel (and non-obvious) concepts and can afford to secure, maintain and enforce such protection. Knowing the landscape and potential pitfalls (including costs) can be invaluable in the patent procurement process. To determine if patent protection is right for you, consult the patent professionals at Walter | Haverfield.
DeMarcus Levy is an attorney at Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at dlevy@walterhav.com or at 216-928-2945.
Design patents on graphical user interfaces (GUIs) are the fastest growing area in design patent applications at the U.S. Patent and Trademark Office. Peter Hochberg explains why these are so important in an article which appeared in the November issue of the Cleveland Metropolitan Bar Journal.
Without patents and trademarks, some of the most valuable business assets in the U.S. would be left unprotected and vulnerable to misappropriation. In Crain’s Cleveland Business, James Pingor, chair of our Intellectual Property group, explains why legal protection for intellectual property should be a priority for business owners and entrepreneurs.
Let’s start with that oh-so-dreadful morning alarm on your iPhone®. That annoying sound forces you to get up from that oh-so-comfy Serta® mattress and sleepily walk to the kitchen to make that oh-so-delicious Starbucks® coffee.
It’s your morning routine. It’s a routine saturated by someone else’s intellectual property. That jingle on TV–trademarked. Your iPhone®–patented. The mattress– patented. Your Starbucks® coffee–trademarked. And let’s not forget that all-important coffee maker–also patented.
We have become a world cluttered with patents and trademarks–and for good reason. Without them, some of the most valuable business assets in this country would be left unprotected and vulnerable to misappropriation.
Trademarks refer to symbols, names or phrases that are legally registered to identify the source of a company’s product and/or service. A patent is a right granted by the government to inventors to exclude others from replicating and selling their products.
We, as consumers, observe and utilize numerous patents, trademarks and other kinds of intellectual property hundreds, if not thousands, of times a day. And they are becoming an increasingly larger part of our lives. According to the World Intellectual Property Organization’s statistical database, the number of patent filings in the U.S. jumped 45% from 2001 to 2015. In that same time period, trademark filings increased 51%.
Legal protection for intellectual property is a standard practice for many entrepreneurs and businesses. As a business owner, manager or entrepreneur, it should also become your priority.
Patents and trademarks are crucial to the success of your business and your business’s brand. They provide exclusive rights to a trade name and/or product innovation and offer protection against infringement of those rights.
Those rights also offer a competitive advantage in the marketplace. For example, a registered trademark on the name of your popular pasta sauce recipe means it can’t be replicated and sold by someone else. That’s critical to staying one step ahead of your competition and continuing to add value to your brand.
Without formal intellectual property protection, such as obtaining a patent or registering a trademark with the U.S. Trademark Office, your internet presence and online business are at risk. A competitor may use the name of your business for their business and optimize the capability of search engines to direct the online traffic to their site. That leaves you far behind in the shadows.
Therefore, it is advantageous to take the time to invest in protecting your most valuable assets. Our intellectual property attorneys have been helping to protect the brands and innovations of companies of all sizes for decades. We serve a broad base of clients who span the country and the world. Our depth of experience allows us to tackle even the most complex intellectual property issues while we focus on maximizing opportunity and revenue for our clients.
Jamie can be reached at (216) 928-2984 or jpingor@walterhav.com.
If your business has a trademark but hasn’t registered it, one of your most valuable assets could be at risk. A key challenge is that many businesses that use trademarks are not even aware that they can and should be registered.
A trademark is a word, phrase, symbol or design, or a combination of any of these that identifies and distinguishes the source of the goods of one party from those of others. Registration of trademarks offers multiple benefits, including the ability to use the registered mark (®) adjacent to the trademark to clearly indicate that it is valuable enough to be registered with and protected by the United States Patent and Trademark Office (USPTO). Registration also gives the trademark owner access to the federal courts throughout the U.S. and the ability to register the trademark with the U.S. Customs and Border Protection Bureau. Failure to register a trademark can enable third parties to use it or something that is confusingly similar to market their own products, thereby devaluing what could have been a significant asset for the business.
In some cases, businesses use trademarks without realizing that they are trademarks and that they could be registered. Trademarks can exist in many forms including, but not limited to: names of specific products or services; logos for the business or particular products or services; specific colors used with products; characters used in corporate ads, such as pictures of babies, novel creatures, borders, outlines, etc; or product trade dress, which refers to visual characteristics of a product
or its packaging. Without the protection of registration, these marketing assets could be used by another company–perhaps a direct competitor–without easy recourse.
Trademarks can be registered if they are not confusingly similar to other already registered trademarks and if they pass an opposition process which allows the public an opportunity to oppose any published mark believed to be damaging to the opposer. Owners of unregistered trademarks unfortunately would likely not even be aware of the publication of a competing mark for opposition.
An easy, inexpensive registration process
Registering a trademark with the USPTO is relatively easy and inexpensive. The first step is to contact an intellectual property (IP) attorney who practices trademark law to determine if the trademark can be registered. The attorney will conduct a search of trademarks filed and/or registered at the USPTO to determine if any are “confusingly similar” to the trademark under consideration. During this process, the attorney considers key features of the trademark, including its visual appearance and meaning, to determine if anything could be considered “confusingly similar.” The cost of a search is usually less than $1,000.
The attorney must also determine if the mark is “merely descriptive,” which means it is descriptive of the goods or services with which it is used. If the mark “fails” this test, the attorney may advise the client to select a different trademark. Otherwise, the attorney will proceed to prepare an application for filing. It’s important to note that the trademark must already be in use in interstate commerce or the owner must have a bona fide intent to use the trademark in commerce in order for an application to be successfully filed. As part of the application process, the attorney will designate the goods and/or services with which the trademark is to be used. Typically it’s better to use the goods and/or services that are designated in the classification manual of the USPTO, since this will reduce the government filing fee. Typical fees are approximately $275 per class. In most cases, especially when dealing with smaller businesses, the trademark is only filed in one class to minimize costs.
The application is filed electronically online with the USPTO for review by an examining attorney often for less than $1,500. Assuming the application passes the examination, the trademark is then published for opposition before the Trademark Trial and Appeal Board. In most cases, there is no opposition filed. In some cases, there may be an applicant using the same or similar trademark for different goods and services. In these cases, applicants could sign an agreement to not use the trademark on those goods or services of the opposer.
The total cost for registering a trademark (assuming little or no opposition) is typically less than $3,000, not including the government filing fee. This is a relatively small investment considering the long-term potential value of the trademark. The average approval process takes between one and two years.
Protecting trademarks abroad
It’s important to note that a U.S. trademark registration is only valid and enforceable in the U.S. Business owners who are concerned about possible trademark infringement by goods or services made, used or sold in other countries, possibly for import into the U.S., can apply for foreign trademark registrations which are also relatively simple and inexpensive. According to reciprocal trademark laws between the U.S. and most foreign countries, a U.S. trademark applicant can file a corresponding application in nearly any other country within six months of the U.S. filing date and still obtain the effective filing date of the U.S. application.
It is possible to file applications in groups of countries for a reduced filing fee. Most countries in Europe, for example, belong to the European United Intellectual Property Office (EUIPO), so an applicant can file a single application and obtain a registration that is enforceable in all member countries of the EUIPO. Considering that many products are made in China and sold in the U.S., it is very common for U.S. trademark owners to also file applications in China.
Considerations for licensing trademarks
Trademarks can be licensed to other businesses, especially in cases where the business of the trademark registrant cannot be marketed in a particular region or to different classes of goods. However, licensing agreements should always require the licensee to meet certain quality standards in order to maintain the value and integrity of the trademark. Licensors should regularly police the use of the trademark by licensees. A license without an accompanying quality and policing agreement is referred to as a naked license and could lead to an invalidation of the registration.
The value of trademark registrations in an effort to protect valuable trademarks cannot be over-emphasized. As this article has documented, the process for registering trademarks in the U.S. and abroad is relatively easy and inexpensive, hopefully making trademark registration a consideration for even the smallest of businesses.
Peter Hochberg is a partner in the Intellectual Property group at Walter | Haverfield. He can be reached at 216-928-2903 or dphochberg@walterhav.com.
As seen in Crain’s Cleveland Business on November 15, 2016
No one would argue that the Cleveland Indians had a great run this past season. Thanks to their qualifying for the World Series, images of Chief Wahoo deluged our television screens, our print media and our social media postings. Beneath the fanfare, however, are some very serious legal issues that could ultimately challenge the long-term use and value of the Indians icon.
The battle over the appropriateness of using Chief Wahoo has been raging for years now. In 2014, when the Washington Redskins lost a legal battle to protect the registration of its own mascot and Redskins name, the questions around the continued use of Chief Wahoo again came to the forefront. More recently, another legal battle began when a band called “The Slants” attempted to register the band’s name which was considered to be disparaging against persons of Asian descent.
At issue is a federal law that bars the registration of trademarks which consist of or comprise immoral, deceptive or scandalous matter or matter which may disparage individuals. With all of the current focus on the rights of American citizens, there are some in the legal field who argue that this law, which is part of the 1946 Lanham Trademark Act, violates Americans’ rights to free speech. This is one of the arguments being used by the Washington Redskins, who are attempting to overturn the 2014 decision issued by the Trademark Board of the United States Patent and Trademark Office (USPTO) which resulted in the Redskins’ trademark registrations being cancelled — even after decades of using the familiar icon and name. Similarly, THE SLANTS mark was denied registration by the USPTO, but this decision was reversed on appeal by a Federal Court. The Slants’ case is expected to be heard by the Supreme Court sometime in mid-2017.
In early 2016, a similar attempt to cancel a Chief Wahoo logo registration was filed with the USPTO by an organization called People Not Mascots, Inc. There are also, of course, numerous protests and negative publicity involving Chief Wahoo. The matter at the USPTO involving the Chief Wahoo registration is suspended until the Supreme Court makes a decision on THE SLANTS.
So what does all this mean for the Chief Wahoo trademark? With the notoriety of the ongoing dispute involving the Redskins’ trademarks and the more recent publicity around The Slants, there is certainly the possibility that the use of Chief Wahoo could be abated. Of course, at a time when Cleveland is playing in the World Series, most fans don’t want to think about their team without their beloved Chief Wahoo. Depending on how the Supreme Court decides in The Slants’ case, it is something worth considering—perhaps not right now but not-too-far into the future.
What would it mean if one were to successfully challenge the Chief Wahoo trademark registration? The effects would likely not be felt immediately. After all, the Indians have been widely using Chief Wahoo for decades. The loss of the registration would not mean they couldn’t continue using the logo. It is important to consider that trademarks are created as a result of use. However, without protection of the trademark by a federal registration, it may potentially be more difficult to justify the continued use of the trademark. Most organizations, whether they are manufacturers or sports teams, would agree that it’s not worthwhile to keep investing to build goodwill in something where there might be more difficulty to ensure sufficient protection.
Ultimately what will be the fate of our longstanding Chief Wahoo? Only time (and the courts) can tell. In the meantime, however, this situation provides some valuable lessons for entrepreneurs and corporations that have trademark assets worth protecting by registrations. For some organizations that couldn’t previously register a trademark that was seen as disparaging, offensive, immoral, or the like, they could potentially be able to secure a registration if the courts strike down the relevant provision of the federal law. If the court determines alternatively, then organizations that thought their controversial or offensive trademarks were protected could lose their registration, potentially making it more difficult to keep copycats at bay. In turn, it could be easier for organizations to challenge such offensive trademarks.
Organizations looking to create a new trademark should heed the current controversies, perhaps avoiding altogether a trademark that could be seen as offensive, and ultimately not registrable or easily challenged (not to mention the marketing issues surrounding such trademarks).
Whichever way the courts decide, the importance of registering a trademark cannot be overstated. Although a trademark can be created by adding a “TM” after the name or symbol with continued use, an official registration of that trademark makes it a legally protected asset across the country. Don’t make the mistake of leaving one of your company’s most valuable assets unprotected.
In the meantime, let’s celebrate a phenomenal season and look forward to an even more successful 2017 season!
Sean Mellino is a partner in the intellectual property practice group of Cleveland-based Walter | Haverfield LLP.
