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Can I use crowdfunding success to register a trademark?

 

Like many things in the law, it depends.

Many successful businesses start after raising capital for an initial promising product via crowdfunding. As you may already know, sites like Kickstarter and Indiegogo offer prospective entrepreneurs the ability to market an idea for a product, service, or business to potential “microinvestors”, who might be promised rewards at various levels of contribution levels. So someone who invests in a new board game might receive a first edition version of that game if the project is successfully funded. In comparison to more traditional forms of entrepreneurialism, instead of equity in the business in exchange for their investment, funders or backers tend to receive products or services related to the upstart business.

Yancey Strickler, co-founder of Kickstarter | [Photos from t… | Flickr

Photo Courtesy of Rex Hammock via Flickr

Since some of those backers are promised they’ll receive a product in exchange for their investment, clients often ask if their crowdfunding campaign alone can be used in their trademark application. Whether we’re filing a use-based application under 1(a) or a specimen showing use in an allowed 1(b) application, we want to make sure our specimen will be accepted before we file a specimen showing use. If a specimen is determined to be inadequate, an applicant might have no choice but to re-file their application. That’s why it’s important to make sure a specimen will work before we submit it to the USPTO.

Any time we’re concerned about a specimen showing use, the first question should always be: Does the mark appear in connection with the goods or services we’re registering? Sometimes, crowdfunding campaigns owe much of their success to the branding surrounding the product. In those cases, we at least have our mark shown in connection with the goods. Other times, a product might be successful independent of the branding, and that branding might even change once the product is ready for the market. In those cases, the mark might not be used in connection with the product yet and we may have to wait to file under 1(a) or submit a specimen under 1(b).

IndieGoGo HQ | Sebastiaan ter Burg | Flickr

Photo courtesy of Sebastiaan ter Burg via Flickr

If it’s true that the mark we want registered appeared in connection with the goods we’re seeking to protect that mark for, we’ve cleared the first bar needed for a successful specimen. However, we still need to show that the mark was used in interstate commerce. While it may be true that investment or backer offers were made over the internet, and that money may have travelled via interstate commerce to successfully back a crowdfunding campaign, the goods themselves might not have made similar trips through commerce. Until that is the case, the crowdfunding campaign might closely resemble that of a pre-sale.

For pre-sale activity, the Trademark Manual of Examination Procedure states that USPTO, “must refuse registration if the specimen indicates the goods have not been sold or transported in commerce.” It goes on to provide that examples of pre-sale orders for goods not yet available to consumers do not qualify as use in commerce. A specimen submitted at this point could be rejected. If an applicant cannot show orders placed and fulfilled prior to submission of the defective specimen, the applicant will likely need to re-file.

To avoid this hassle, it is important to wait for products to be available for purchase online or in a retail setting before submitting a specimen showing use. Alternatively, an applicant may wish to try submitting a specimen once the first backer orders are fulfilled. However, the USPTO may later require supplemental evidence showing fulfillment of the orders. These might take the form of invoices, tracking information, product reviews, etc. It’s important applicants hold onto this type of documentation should it be requested upon examination of their specimen. No matter what, a trademark specimen should never be submitted prior to the marked goods themselves traveling in interstate commerce, no matter how successful the crowdfunding campaign may have been.

Can I Trademark my Name?

A trademark is usually a word, phrase, symbol, design, or a combination thereof that helps consumers identify the source of a product (or service in the case of service marks). Names of people, names of companies, logos, and symbols, as well as other things like sounds or look-and-feel can all be trademarked. Well-known examples of trademarked names include performing artists like Beyonce’ and Taylor Swift, fashion designers like Ralph Lauren or Calvin Klein, and to established businesses whose more personal genesis is long forgotten like McDonalds, which was named after the original founders. This leads many to wonder to themselves, “Can I trademark my name?”

Site of the first McDonalds, commemorating the founders | Flikr

It’s relatively easy to register a domain name. Often, a few dollars and knowledge that a domain is available is all you need. The convenience and ease of purchasing exclusive rights to a domain created the “cypersquatting” industry. While legitimate businesses may increase a value of a domain through marketing, content, and other mechanisms, cybersquatters usually try to register domain names they think may already hold value due to their resemblance to a famous name or mark. Then, once the person or mark holder requests to purchase the domain for a reasonable price, the cybersquatter may offer an outrageous sum instead.

To combat cybersquatting, the Anti-Cybersquatting Consumer Protection Act was signed into law in 1999. Now, a trademark owner may be able to sue to collect damages for trademark infringement AND be able to recover the domain if bad faith intent to profit can be shown.

The Internet Corporation for Assigned Names and Numbers (ICANN), the international organization responsible for supervising domain name registrations, also offers an arbitration process, which is usually more efficient and inexpensive for trademark owners than enforcement in court would be.

Due to the risks of cybersquatting, famous individuals and businesses alike often secure rights to their name so they may combat cybersquatting more readily. This is especially true when a person’s name is synonymous with the work, service, or goods they provide. Musical and theatrical performers may tour under their name and even sell merchandise bearing their name and/or likeness. Fashion designers are also often known to place their name upon their products, much like a company would.

If your name is like most peoples’, you probably only use it to interact with businesses and other individuals, but not in commerce. But if you’re entrepreneurial, and if your name (or stage name) also identifies a company, goods, services, or an offer to provide professional services over which you oversee, you should consider trademarking your name. However, there are still some considerations you may wish to make.

First, everyone should understand that surnames have a special exception under US trademark law. When a mark is comprised of a term that, standing by itself, is “primarily merely a surname”, the surname may need to be disclaimed. That means “Jeff Smith Auto Parts” and “Bill Smith Auto Parts” might both be on the register, with their own rights to “Smith”, but the marks don’t conflict and other marks with “Smith” may not either. In order to protect a mark component that is “primarily merely a surname”, that surname itself must have secondary meaning—that ordinary consumers would recognize the surname as a source. McDonald’s is probably the best example of such a mark.

Beyonce' owns multiple Trademarks across various classes of goods and services for her name

Wikimedia Commons

Even if you decide not to register your name, you may be able to still use your name as a mark if you have adopted it to identify your goods and/or services. This is referred to as a commonlaw trademark right. Still, whenever you claim rights to a mark, you should use the “TM” or “SM” designations, for trade and services marks, respectively. Registering your mark can provide certain additional protection under trademark law, including giving the owner the ability to bring action in federal court and obtaining foreign trademark rights.

The best way to decide whether registering your name as a trademark is to consult with a trademark attorney before you file your application. Please contact our office for a free consultation.

 

Design Patent Drawings

What are design patent drawings and how many are required for Design Patent Applications?

While the USPTO has various rules for drawings that are included for Utility Patent Applications, the rules for Design Patent drawings are especially important to follow. Failure to follow them exactly may require significant expense in justifying modification or even risk the abandonment of your invention.

General Rules on Format

Generally, Design Patent drawings should be drawn as solid black-and-white line drawings with what is known as “proper surface shading”. Importantly, features not intended to be claimed should be unshaded and have dotted lines. For instance, a new mug handle might include a properly shaded and solid line drawing for the handle portion, with dotted and unshaded portions for the cylindrical mug. A thorough guide to drafting compliant drawings is available on the USPTO’s website.

More Specific Formatting Considerations

As mentioned above, surfaces should be shaded. Shading should illustrate the character and contour of the surfaces of any 3D features of the design to be patented. Environmental portions, or those portions not intended to be claimed in the patented design, are not shaded and should be represented with broken or dotted lines.

Some Exceptions

The USPTO does allow black-and-white photographs to be submitted instead of drawings, but only when photographs are the only practicable way to illustrate the invention’s design. See 37 C.F.R. § 1.84(a)(2). Color photos/drawings must be filed along with a petition under the same C.F.R. section. The petition must explain why the inventor must submit color photos/drawings and/or why they are necessary to show the invention. In addition, the applicant must include three sets of the proposed color photos/drawings and the specification section of the application must include the following statement:

The patent or application file contains a least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

How Many Drawings are Required?

The general rule is seven drawings. Essentially, any 3D item would have views in correlation to the sides of a dice – a front, back, left, right, top, and bottom. The seventh drawing is normally a perspective, such as slightly above and to one side, looking down. If an invention is quite symmetrical, an eighth drawing might help ensure there aren’t any issues during examination. Professional patent artists often use techniques that easily convert CAD drawings into each required view, requiring only minor edits. This can significantly reduce this burden on the inventor.

If you want to protect your ornamental design with a Design Patent, it’s important to keep these special rules for Design Patent Applications in mind. Since you’ll need to prepare important documents and proper drawings are crucial to turning your application into a patent, you should consider hiring a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

 

Being Careful when Requesting to Divide US Trademark Applications

Often, companies seeking a pre-determination as to whether a new brand is registerable as a US Trademark will apply for a trademark before they begin using it in commerce. These applications, commonly referred to as Intent to Use (ITU) or Section 1(b) applications, are reviewed for conflicts and other requirements before evidence of use is submitted by the applicant. If an applicant filing an ITU trademark application expects to use the brand across a variety of goods and services, they may choose to file in multiple trademark classes. However, after being allowed by the USPTO, the applicant must submit their evidence of use across ALL classes before the deadline to allege use. If the applicant has only established use in some, but not all classes, they must divide their application. By doing so, the applicant must be diligent to make sure part of their application avoids abandonment.

 

A Request to Divide is usually accompanied with an Allegation of Use in at least one of the applied for classes. The Allegation of Use must include a specimen – usually one or more photos of the goods and/or services bearing the applied for mark. For classes which the applicant is not yet prepared to submit specimen, the applicant must pay the Allegation of Use fee, Request to Divide fee, AND application fees related to those classes the applicant wishes to divide from the original application. Failing to pay the new application fees in each class will result in abandonment of the divided classes which can only be revived by paying these fees and filing a petition to revive with the corresponding petition fee. There are timing requirements for petitions which are strictly enforced and may result in the permanent abandonment and require an entirely new application with a new priority date.

 

If you’re considering protecting a new brand with a trademark, but want to make sure it will be allowed first, ITU applications are a great way to begin. If you’re planning on using and protecting your brand in a variety of classes, it may be helpful to strategize with a Trademark Attorney beforehand. Knowing critical dates in advance can help you prepare to avoid having to divide your application in the first place. If you do have to divide your application, it may be a good time to hire an attorney to help you avoid abandonment or unnecessary revival fees. Since you’ll need to prepare important documents and critical dates are crucial to protecting your brand with a trademark, you should consider hiring a trademark attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

USPTO Now Requires International Applicants to be Represented by a US Attorney

In May 2019, the USPTO announced that as of August 3, 2019, all international applicants for US trademarks must be represented by US counsel. The final rule has been published in the Federal Register. This means that to submit a new trademark application, to respond or enter documents into a pending trademark application, or to renew existing registrations, international individuals and businesses must hire a US attorney to represent them and submit these materials on their behalf.

 

The new rule is intended to satisfy 3 goals: (1) increase USPTO customer compliance with US trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions, and (3) safeguard the integrity of the US trademark register. Since domestic and international businesses rely on the US trademark register to make important business and legal decisions about their brands, the USPTO determined that requiring international applicants be represented by counsel would help them maintain compliance with their stringent trademark rules. It found that an increasing number of international applicants had filed inaccurate and potentially fraudulent submissions with the USPTO. Some cases have even involved governments and business entities offering cash bounties in the form of subsidies for successful registrations of trademarks in the US. The USPTO found that these applicants often were represented by non-lawyer consultants, in violation of unlicensed practice of law policies.

 

To protect international applicants from unwittingly participating in fraud facilitated by these international non-lawyer consultants, and to otherwise harmonize the USPTO rules with its international trademark office peers, this policy now requires electronic submissions by international applicants to be submitted by US attorneys having verified credentials with the USPTO. In fact, as of October 26, 2019 all applicants, domestic and international, are now required to obtain USPTO credentials in order to submit trademark documents in order to prevent misuse of the online system. Through 2020, you can expect the USPTO to take further steps to increase security and reduce fraud. These will include verification of each my.uspto.gov account and adding the ability to delegate and control access to filings.

 

Due to these changes, it’s now more important than ever to have experienced trademark counsel represent you before the USPTO. If you are an international or domestic applicant who wants to be represented by a firm with decades of experience protecting brands with US trademarks, please call Grell & Watson Patent Attorneys for a free consultation.

Who owns the invention Employer or Employee

Employer vs. Employee?

It’s not a simple answer and depends on a number of factors and state law not fully disclosed herein.  A) Was the employee “hired to invent” something or to solve a particular problem? Then the Company may likely own the invention. B) Did the employee use the resources of company to invent or invent during hours of employment?  Does the invention relate to the business of the company?  Then the Company may likely own the invention. Was there an express employment contract covering this issue?

With no express employment contract requiring the employee to assign , and A) or B)  above the Company may claim at least a “shop right” – a non-exclusive license to use the invention (related to company business) within the normal scope of company business.

If not A) or B) then employee may own the invention.