The Patent Prosecution Highway (PPH) is an international initiative that enables accelerated examination of patent applications through cooperation among participating patent offices. For business owners and attorneys seeking faster intellectual property protection, the PPH is useful tool for streamlining the patent prosecution process.
The Patent Prosecution Highway (PPH) is a cooperative framework among patent offices designed to expedite the examination of utility patent applications. It consists of a series of bilateral and multilateral agreements that permit applicants to leverage favorable examination results, such as an indication that at least one claim is allowable from one participating patent office (referred to as the Office of First Filing or OFF) to request accelerated examination in another participating office (the Office of Later Examination or OLE).
For example, if an applicant receives a positive examination outcome in a European patent application, they may use that outcome to file a PPH request in the Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), or any other office with a PPH agreement in place. To qualify, the application filed in the second office must sufficiently correspond to the claims found allowable in the first office, and a PPH request must be filed before substantive examination begins.
The PPH significantly streamlines the patent prosecution process by allowing patent examiners in the second office to rely on the prior search reports, written opinions, and examination results from the first office. These shared work products can guide the examiner in identifying allowable subject matter more quickly, often leading to fewer office actions, earlier grants, and reduced costs for the applicant.
In addition to bilateral agreements, the Global PPH pilot program provides a harmonized framework that includes over two dozen participating patent offices, enabling applicants to use a standardized request process across multiple jurisdictions. By allowing applicants to request accelerated processing in OLE offices, the PPH supports faster and more efficient international intellectual property protection.
PPH programs are particularly useful for applicants filing under the Patent Cooperation Treaty (PCT), as positive written opinions or international preliminary examination reports from the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) can serve as the basis for a PPH request during the national phase.
The Patent Prosecution Highway (PPH) was developed to address several challenges in the global patent landscape, particularly the redundancy and inefficiencies caused by multiple jurisdictions independently examining similar or identical applications. Traditional patent prosecution often involves waiting for a first office action and responding to multiple rejections. With the PPH, the examination process is expedited, and the number of office actions may be reduced. By fostering cooperation and information sharing among participating patent offices, the PPH aims to create a more streamlined and harmonized international patent system.
Overall, the objectives of the PPH align with the broader goals of modernizing the international patent system, facilitating foreign trade, and encouraging innovation through faster and more cost-effective intellectual property protection.
To use the PPH, an applicant must first file a patent application in a participating office (the office of first filing or OFF). Once that office determines that at least one claim is allowable, the applicant may request accelerated examination for a corresponding application in another participating office (the office of later examination or OLE).
Filing a Patent Prosecution Highway (PPH) request requires careful attention to timing, documentation, and jurisdiction-specific rules. Applicants should ensure full compliance with the requirements of the relevant participating patent office to avoid delays or outright rejection. Filing a PPH request typically involves the following steps:
Applicants should also be mindful of the timing and procedural nuances in different jurisdictions. Some offices may have specific forms, page limits, or electronic filing protocols. Filing errors, such as failing to provide required translations, omitting correspondence tables, or submitting the request after substantive examination has begun, can result in denial of the PPH request.
There are three primary types of PPH that reflect the sources of prior work products used to support a request for accelerated examination.
Each PPH type offers unique advantages depending on the applicant's filing strategy, target jurisdictions, and the source of allowable claims. For applicants filing under the PCT, the PCT-PPH route is often the most efficient. For those relying on fast national examination results, bilateral or Global PPH pathways may be preferable. Regardless of the type chosen, all PPH programs aim to reduce redundancy, speed up examination, and improve the predictability of international patent prosecution.
Numerous countries and regional offices participate in PPH programs, including:
A full list of participating patent offices and their bilateral agreements can be found on the USPTO and WIPO websites.
While the Global PPH provides a consistent framework, some patent offices maintain unique procedures or requirements. For example:
Understanding local requirements helps avoid rejection of the PPH request.
As international collaboration and demand for streamlined intellectual property (IP) systems grow, the Patent Prosecution Highway (PPH) is poised to evolve significantly. The globalization of innovation, increased cross-border filings, and technological advancements are driving ongoing improvements in the scope and functionality of PPH programs.
Several key developments are shaping the future of the PPH:
In summary, the Patent Prosecution Highway is a powerful mechanism that provides a strategic advantage to businesses and innovators by expediting prosecution of patents, improving consistency among jurisdictions, and lowering the overall burden of securing global patent rights.
If you are considering pursuing international patent rights or you have other patent matters with which you need assistance, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
An "intent to use" (ITU) trademark application can be a valuable first step in the trademark registration process. A business can secure priority in a brand name, logo, or slogan (the trademark) before the business establishes any sales under the trademark. An intent to use application allows applicants to secure a priority filing date while they prepare for product or service rollout. Many well-known companies in tech, fashion, and entertainment file ITU applications before launching brands. This proactive strategy helps secure rights during product development and marketing preparation.
For example, a startup planning to launch a new software service may file an ITU application with the mark associated with the intended software service. While finalizing beta testing and marketing materials, the trademark application is pending and the company can subsequently register the mark once it is in use in commerce.
An intent to use trademark application is a filing option under Section 1(b) of the Lanham Act that can be submitted to the United States Patent and Trademark Office (USPTO). An ITU application allows applicants to claim rights in a trademark or service mark before it is used in commerce. Instead of proving actual use at the time of filing, the applicant provides a sworn statement declaring a bona fide intent to use the mark in commerce in the near future.
An ITU application can be a valuable tool for startups, rebranding companies, and businesses launching new products or services. It allows the applicant to secure rights before there is public disclosure of the brand, and ensures that no one else can claim the mark after the filing date. This approach gives the applicant time to finalize branding, production, and marketing without third parties establishing earlier rights in the same or similar mark.
To file an intent to use application, the applicant must have a bona fide intent to use the applied-for mark in commerce. This means the intent must be in good faith and genuine, with current plans to carry out the provision of the goods or services under the applied-for mark. The USPTO and courts may require the applicant to provide evidence of this intent, such as business plans, product prototypes, or marketing research.
The requirement of a bona fide intent to use a trademark ensures that the trademark register reflects marks tied to genuine commercial activity rather than speculative or defensive filings. This policy protects the integrity of the registration system by preventing applicants from blocking others through unused placeholder applications intended to obstruct the lawful use of trademarks in commerce. It also aligns with the constitutional basis for trademark law under the Commerce Clause, which requires a real intent to use the mark in commerce.
If a legal conflict develops later (e.g., a third party challenges the application), having sufficient evidence of bona fide intent becomes crucial. If the party challenging the validity of the ITU application filing can show that there was no bona fide intent to use the applied-for mark at the time the intent to use application was filed, the resulting trademark registration may be invalidated void ab initio and possibly fraud on the trademark office.
Filing a trademark application on an intent to use (ITU) basis provides significant strategic advantages for businesses and brand owners preparing to launch new products or services. One of the primary benefits is the ability to secure an earlier application filing date. The filing date establishes priority, which can be crucial if a legal conflict develops or if another party later attempts to register a confusingly similar mark. By locking in that earlier date, the applicant gains a competitive edge in potential disputes. In addition, an ITU application serves as a powerful brand reservation tool. It signals to the marketplace that the applicant has laid claim to the mark, discouraging others from using or seeking to register identical or similar marks. This early filing can prevent costly conflicts down the road. Furthermore, the ITU process provides flexibility, allowing applicants time to develop their brand identity, marketing materials, and distribution plans before proving actual use in commerce.
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The intent to use (ITU) application process is very similar to standard use-based trademark application under Section 1(a) of the Lanham Act, but with some important distinctions. When completing the application form, the applicant must designate the application under the “intent to use” basis and include a sworn statement affirming a bona fide intent to use the mark in commerce. The applicant must also clearly identify the goods and/or services with which the mark is intended to be used.
After submission, the application is assigned to a USPTO examining attorney. The examining attorney reviews the ITU application to ensure that it satisfies all legal requirements under the Lanham Act, including proper classification, clarity of the identified goods or services, and the absence of conflicting marks. If the application passes this examination without issue, it proceeds to publication in the Official Gazette. This public notice gives third parties an opportunity to oppose the mark’s registration if they believe it would cause them harm. If no opposition is filed, or if any opposition is resolved in the applicant’s favor, the USPTO issues a Notice of Allowance (NOA), signaling that the application has been preliminarily approved pending proof of actual use in commerce.
A Notice of Allowance (NOA) indicates that the intent to use (ITU) application has been preliminarily approved by the USPTO, but the mark is not yet registered. To proceed to a trademark registration, the applicant must prove actual use of the mark in commerce. This is done by filing a Statement of Use (SOU), which includes a verified statement affirming that the mark is currently in use, and a specimen of use showing the mark as used in connection with the identified goods or services.
The SOU must be filed within six months of the issuance of the NOA. If the applicant is not yet ready to demonstrate use within that initial six-month period, they may request an extension of time. The USPTO permits up to five such extension requests, each granting an additional six months, for a total allowable period of up to three years from the NOA date to file the SOU. Each extension request must be accompanied by the required fee and a continued declaration of the applicant’s good faith intention to use the mark.
If the applicant begins using the mark after filing the ITU application but before the Notice of Allowance is issued, they can file an Amendment to Allege Use instead of waiting to file the SOU. This amendment includes the same requirements as a SOU and, once accepted, shifts the basis of the application from intent to use to actual use.
An intent to use trademark application is a powerful tool for businesses seeking to protect their intellectual property before launching a new product or service. It allows applicants to claim a priority filing date while securing time to develop their brand.
With careful planning, an ITU application can help business owners obtain robust trademark protection with long-term value.
To ensure successful registration, applicants should file early to secure an earlier application filing date, maintain documentation proving bona fide intent, and begin using the mark in commerce at the earliest possible time so that registration can be achieved within the statutory timeframe of up to three years from the NOA.
If you are considering launching a business or brand, or you have other trademark matters with which you need assistance, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A Markman hearing, also called a claim construction hearing, is a pivotal proceeding in U.S. federal patent litigation where a judge (not a jury) determines the meaning of disputed claim terms in a patent. This interpretation shapes the scope of a patent holder’s rights and often decides the fate of a patent infringement case.
The hearings are named for the Supreme Court case Markman v. Westview Instruments, 517 U.S. 370 (1996), which mandates that claim interpretation is a question of law for the court.
The Markman hearing is a critical juncture in patent litigation where both patent holders and defendants can gain a significant procedural and substantive advantage if they approach the hearing strategically. For patent holders, the primary objective is to advocate for a broader interpretation of claim terms that encompasses the accused product or process. This often involves leveraging the patent specification and prosecution history to demonstrate how the claim language was intended to be read in light of the invention as a whole.
Patent holders should be careful not to introduce interpretations that risk indefiniteness or overreach, which could invite challenges under 35 U.S.C. §§ 112 or 101. They should also rely on the ordinary meaning of terms where appropriate and be prepared to show how a person of ordinary skill in the art would understand the claim language, potentially through expert testimony and relevant dictionary definitions. Strategically using intrinsic evidence to support a broader scope while rebutting attempts to narrow terms through extrinsic evidence is often essential to preserving the value of the asserted claims.
In contrast, defendants typically seek a narrower construction of the claim terms to avoid infringement or to set the stage for a summary judgment motion. Defendants should carefully analyze the prosecution history and any narrowing amendments or disclaimers made by the patent applicant, which can support a more limited interpretation of the claims. Highlighting ambiguities or inconsistencies between the claim language and the specification may also support arguments for non-infringement or invalidity.
Defendants should be prepared for rigorous cross examination of the patent holder’s expert witnesses, challenging their understanding of the technology and their interpretations of the claim terms. Additionally, aligning proposed claim constructions with eventual jury instructions is vital, ensuring that the jury receives a clear and legally sound framework within which to assess infringement and validity.
Both parties must also remain mindful of how the district court’s claim construction order may affect subsequent proceedings, including appeals to the Federal Circuit, and may influence concurrent proceedings, such as inter partes review before the United States Patent and Trademark Office (USPTO) or enforcement actions before the International Trade Commission.
The legal framework governing Markman hearings and patent claim construction has been shaped by several landmark judicial decisions, starting with the Supreme Court’s pivotal ruling in Markman v. Westview Instruments. In that case, the Court held unanimously that the interpretation of patent claims is a matter of law to be decided by a judge rather than a jury. The decision emphasized that because claim construction affects the scope of the patentee’s legal rights, it is properly within the purview of the court. Importantly, the Court clarified that judges must first look to intrinsic evidence, including the patent's written claims, the specification, and the prosecution history, to determine the meaning of disputed claim terms. Only if the intrinsic record does not resolve ambiguities should courts consider extrinsic evidence, such as expert testimony and technical dictionaries.
Nearly a decade later, the Federal Circuit reinforced and refined these principles in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), which is now the leading case on patent claim construction rules. In Phillips, the Federal Circuit's decision reiterated that the starting point for interpreting claim language is its ordinary meaning as understood by a person of ordinary skill in the art, in light of the patent specification. The court confirmed a strong preference for relying on intrinsic evidence, cautioning that extrinsic sources such as dictionary definitions, inventor testimony, or expert opinions should not override the context provided by the patent itself. The Phillips decision established a hierarchical approach to evaluating evidence in claim construction, placing intrinsic evidence at the top.
The standard of appellate review Markman hearing findings has also evolved. Initially, under Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), the Federal Circuit reviewed all aspects of claim construction de novo, meaning it gave no deference to the trial court’s findings. This changed with the Supreme Court’s decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015), which held that while the ultimate determination of claim meaning remains a question of law, any underlying factual findings, such as a judge’s reliance on expert evidence to resolve ambiguities, must be reviewed for clear error on appeal. As a result, appellate review of claim construction now reflects a hybrid standard: legal conclusions are reviewed de novo, while factual determinations are subject to more deferential review. This nuanced approach reflects the complexity of claim interpretation in modern patent litigation.
The Markman hearing is the process of interpreting claim terms, which depends on a structured evidentiary hierarchy established by precedent. Courts divide the sources of interpretive guidance into two categories: intrinsic evidence and extrinsic evidence, with a strong preference for the former.
Intrinsic evidence is considered the most authoritative and reliable source in claim construction. It consists of three core components. First, the claim language itself is the starting point; it must be read in the context of the entire patent, not in isolation. Courts analyze each term in light of surrounding text and how it is used within the patent as a whole. Judges prefer to interpret the written claim language on its face, making the patent scope and rights more accessible to the reader.
Second, the patent specification plays a central role, as it is the written description of the invention and effectively serves as the "dictionary" of the patent, providing definitions, context, and examples of how terms should be understood. The specification may expressly define certain terms or implicitly shape their meaning through detailed descriptions of the invention’s structure and operation.
Third, the prosecution history, which is the record of communications between the patent applicant and the patent examiner during the patent application process, can further illuminate the intended scope of the claims. Amendments, arguments, and rejections captured in this history often clarify the meaning of claim language and may establish disclaimers or limitations that affect how terms are interpreted.
When intrinsic sources fail to fully resolve a dispute over the meaning of a term, courts may turn to extrinsic evidence, which serves a supportive, secondary function. This includes technical dictionaries, engineering glossaries, and treatises that reflect the common usage of terms at the time of the invention. Expert testimony is also a common form of extrinsic evidence, offered to explain how a person of ordinary skill in the art would have understood particular claim terms based on the technical context.
While extrinsic evidence can help fill gaps or confirm interpretations suggested by intrinsic materials, courts generally treat them with caution. The Federal Circuit has consistently held that extrinsic evidence cannot contradict or override the meaning evident from the intrinsic record. In deciding claim construction, Judges will typically only consult extrinsic materials if, after a thorough review of the patent claim language, specification, and prosecution history, there remains genuine ambiguity regarding a claim’s scope.
In sum, while both categories of evidence may be presented during a claim construction hearing, the court’s analysis is anchored in intrinsic materials. Extrinsic sources, including expert opinions and dictionary definitions, are used judiciously and only when necessary to clarify unresolved ambiguities. Any consulted extrinsic support must align with intrinsic record. This prioritization reinforces the importance of clear drafting during the patent prosecution process and underscores the role of the patent specification and prosecution history in defining the legal boundaries of a patent.
While the precise procedures for a Markman hearing can vary depending on the jurisdiction, most district courts follow a similar sequence of events designed to facilitate a thorough and orderly claim construction process. The hearing typically unfolds in multiple phases, starting well before the court convenes for oral argument.
Claim term identification: Each party, plaintiff and defendant, identifies specific claim terms from the patent that are disputed and require judicial interpretation. Courts generally encourage the parties to limit their selection to the most material terms to streamline the process and focus on issues likely to impact the outcome of the patent infringement case.
Selecting the right disputed claim terms is essential. Parties should focus on a limited number of key terms (e.g., 5 to 10) that are most likely to affect the outcome of the case. Overloading the court with excessive disputes can dilute persuasive focus and lead to inefficient proceedings. Strategic claim selection enhances clarity and improves the chances of a favorable construction ruling.
Initial disclosures: This step is governed by local rules that often vary by district. For example, in the Northern District of California, which has established detailed patent local rules, patentees are typically required to serve detailed disclosures within approximately 45 days of the initial case management conference. These disclosures include the asserted patent claims, identification of the accused products or systems, relevant priority dates, and other foundational information that will shape the claim construction dispute.
Claim construction briefing: Each party submits detailed written arguments in support of its proposed claim interpretations. The briefs typically cite intrinsic evidence, including the patent specification, claim language, and prosecution history, and may also include references to extrinsic evidence such as technical dictionaries or expert declarations. In many cases, both sides retain technical experts to provide opinions on how a person of ordinary skill in the art would understand the disputed terms. These expert declarations are often submitted with the briefing, and in some jurisdictions, experts may also be deposed or permitted to testify at the hearing.
Markman Hearing - Oral argument: Attorneys for both parties appear before the judge to present their arguments, answer questions, and address the opposing party’s interpretations. Notably, there is no jury present during this hearing, as claim construction is a legal issue reserved for the court. Depending on the complexity of the technology involved, the court may appoint a special master or engage a technical advisor to assist in evaluating the parties’ positions, particularly in cases involving highly specialized subject matter.
Claim construction ruling: The court will issue its claim construction in a written claim construction order. This ruling sets forth the court’s interpretation of each disputed term and explains the rationale behind each construction, citing the evidence presented and applicable legal standards. The timing of the ruling varies by case. In some instances, judges issue the order early, before substantial discovery has taken place, to help define the scope of the case and inform early motions. However, many courts prefer to hold the Markman hearing after some discovery has occurred but before trial, allowing the judge to consider a more complete evidentiary record while still providing guidance before summary judgment or trial preparation begins. In rare cases, claim construction rulings are issued during or even after trial, particularly when the meaning of terms emerges as a disputed issue during testimony.
Ultimately, the Markman process plays a foundational role in shaping the trajectory of a patent litigation matter. A favorable claim construction can lead directly to a finding of infringement or non-infringement on summary judgment, narrow the issues for trial, or drive the parties toward settlement. For both patent holders and accused infringers, mastering each step of this process, from identifying disputed terms through briefing, argument, and ruling, is essential to an effective litigation strategy.
The outcome of a Markman hearing significantly influences both summary judgment and trial. During a jury trial, the district court’s Markman hearing ruling becomes part of the legal framework for the case. The jury must evaluate infringement and validity based on the patent claim construction provided by the court, which are incorporated into the jury instructions. On appeal, the Federal Circuit applies a dual standard of review established by the Supreme Court in Teva v. Sandoz. While legal conclusions regarding claim construction are reviewed de novo, any factual findings, such as those based on expert testimony or extrinsic evidence, are reviewed for clear error. This distinction underscores the importance of developing a robust evidentiary record at the district court level.
The court's claim construction is also very often a trigger point for settlement discussions between the parties. A Markman hearing may result in patent claim construction that is favorable to one party over the other, creating an incentive to resolve the case early.
Post Grant Review (PGR) and Inter partes review (IPR) are administrative proceedings before the USPTO's Patent Trial and Appeal Board (PTAB) in which the validity of a patent can be challenged without resorting to patent litigation. They are also often used in parallel to patent litigation by defendants to potentially invalidate an asserted patent and render the plaintiff's patent infringement claims moot. These proceedings do not involve formal Markman hearings, but the interpretation of claim scope remains central to the process. The PTAB and patent office examiners routinely construe disputed terms, and their constructions can significantly influence both validity challenges and parallel litigation strategies. Although the evidentiary rules and procedures differ from federal court, parties must still develop persuasive arguments based on intrinsic evidence, often supported by expert declarations.
Business method patents and covered business method (CBM) patents was a form of PTAB proceeding that was in place in 2020 to address the unique challenges in claim construction. Business method patents are highly susceptible to invalidity under 35 U.S.C. §§ 101 and 112. Effective construction in these cases is critical to avoid characterizing the invention as an unpatentable abstract idea or as lacking sufficient written description or definiteness. PTAB often interpreted such claims narrowly to avoid triggering eligibility or enablement issues. The CBM program is no longer in place. However, business method patents can still be challenged in federal court and through IPR proceedings.
Additionally, claim construction issues in patents can arise in International Trade Commission (ITC) proceedings under Section 337, where they often proceed in parallel with district court litigation and may influence the outcome of both forums.
Markman hearings are pivotal in patent litigation. You should seek the assistance of intellectual property attorneys with thorough patent law and litigation expertise. It’s not just legal formality, it’s the key battleground where patent claim construction rules, evidence presented, and judge decisions converge to define the operational meaning of your patent rights.
If you are faced with a potential patent dispute or have other patent matters with which you need the assistance of experienced patent attorneys, contact our firm for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
When launching or growing a business, one of the most critical assets you can develop is your brand identity. Your brand distinguishes your products or services from competitors and creates lasting recognition in the minds of consumers. At the core of brand protection lies the trademark. But navigating trademark law can be difficult, especially for business owners unfamiliar with legal processes. That’s where a trademark attorney becomes an invaluable asset.
In this article, we answer the essential question: What does a trademark attorney do? We’ll walk through the key legal services trademark attorneys provide, how they help you protect and enforce your rights, and why their expertise can make or break your brand’s success.
A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods or services. Trademarks can include brand names, logos, taglines, product packaging, and even unique sounds or colors. Owning a trademark gives you the legal right to prevent others from using confusingly similar marks that might mislead consumers.
Whether you’re starting a new venture or expanding an established company, securing your own trademark rights is vital to building and protecting your brand. However, the trademark application process is significantly more complicated than filling out forms. It involves trademark vetting, legal strategy, risk analysis, and trademark maintenance, tasks where a skilled trademark attorney brings substantial value.
Before investing time and money into branding, a trademark lawyer can help you vet your proposed trademark and conduct a comprehensive trademark search. A comprehensive search identifies existing trademarks that may conflict with your proposed name or logo and helps you avoid costly mistakes that could lead to legal disputes or forced rebranding.
Business owners and entrepreneurs sometimes attempt to conduct their own trademark search without the assistance of a trademark attorney. Skipping a comprehensive search or relying solely on free online tools can result in adopting a mark that is already in use or too similar to another protected brand. The consequences can include lawsuits, denied applications, or rebranding expenses.
Without an understanding of how priority rights in trademarks work, knowing where threats and risks to trademark registrations come from, and proper search tools, non-attorneys can easily fail to conduct a proper and thorough trademark search. Searches should, of course, include reviewing the United States Patent and Trademark Office (USPTO) database for potential conflicts with prior filings, but it is also important to identify state-level trademark registrations, search for unregistered common law marks, and to search domain names, business directories, and social media platforms.
The results from these searches must also be properly analyzed to determine whether the mark can be registered and whether there is a potential for trademark infringement. This multi-layered review uncovers both direct conflicts and confusingly similar marks that may pose registration challenges or trademark infringement risks. A trademark attorney has the knowledge and skill to properly analyze these results, identifying red flags that a business owner might miss.
A trademark attorney will also analyze whether your proposed mark is eligible for federal trademark registration based on formal requirements. Not all trademarks qualify for protection under U.S. law. Marks that are considered generic or merely descriptive marks, those that simply describe the goods or services, are refused registration by the USPTO.
A key part of this evaluation involves assessing the distinctiveness of the mark. Trademark law classifies marks along a spectrum, ranging from fanciful marks (like "Xerox" or "Kodak") to arbitrary, suggestive, descriptive, and finally generic terms. Fanciful marks are inherently distinctive and among the easiest to register because they are invented terms with no prior meaning. In contrast, descriptive marks, for example "Cold and Creamy" for ice cream, are often considered weak and may require proof of secondary meaning to gain protection.
Your trademark attorney will also explain the difference between use-based applications, where the mark is already in use in commerce, and intent-to-use applications, which are filed when you plan to use the mark in the near future. Understanding which filing basis is appropriate can influence the success and timing of your application.
By helping you choose a legally strong mark from the outset, ideally one that is distinctive, unique, and clearly associated with your brand, your attorney sets the stage for a smoother registration process and long-term brand protection. This strategic guidance can make a crucial difference in ensuring your trademark is not only accepted but enforceable in the marketplace.
A major part of what a trademark attorney does is manage the trademark application process, ensuring that all required elements are properly prepared and submitted to the USPTO or an appropriate state trademark office. This legal process demands precision, strategy, and a comprehensive understanding of trademark law.
There are many formal requirements that need to be properly addressed, including properly identifying the correct trademark owner and applicant, determining the proper basis for the application (e.g., should it be a current use application, an intent-to-use application, an application based on foreign priority, or other basis), properly identifying goods and services and the correct classification therefor, and submitting a proper specimen of use demonstrating use of the mark in commerce. The application process demands precision, strategy, and a comprehensive understanding of trademark law.
Errors, omissions, or misclassifications in any of these areas can result in delays, refusals, or even loss of rights. By entrusting this process to a trademark attorney, you ensure that your application is complete, accurate, and legally sound, maximizing your chances of approval and long-term brand protection.
During examination, the application will be assigned to a trademark examining attorney to review and evaluate whether the trademark can be registered. The Examiner may issue a USPTO office action, which is an official letter detailing problems with the application. These could be procedural (e.g., missing information) or substantive (e.g., a likelihood of confusion with an existing mark).
Responding to office actions often requires legal arguments, amendments to the application, or supporting evidence. Trademark attorneys are skilled at crafting responses that address the USPTO’s concerns and move the application toward approval. Having a skilled trademark attorney ensures that the office action is properly addressed and the trademark is given the best chance of registration.
Even after registration, trademark rights require ongoing maintenance. A trademark attorney helps ensure you meet renewal deadlines, file required declarations of use, and monitor the market for potential infringers. Attorneys manage monitoring the USPTO for confusingly similar new applications, surveying the marketplace for unauthorized use of confusingly similar marks, and surveying domain names and social media handles that may violate your trademark rights
If another party uses a similar mark in a way that causes consumer confusion, your trademark attorney can take action. They may start with a cease-and-desist letter or escalate to formal litigation if needed. Enforcement actions include sending demand letters, filing oppositions or cancellations against third party trademark filings with the Trademark Trial and Appeal Board (TTAB), and initiating lawsuits in state and federal court.
Attorneys help you assess the scope of the infringement, potential damages, and the best course of action. Their involvement often leads to faster and more favorable resolutions.
Before launching a product or entering a new market, businesses must assess whether their branding could infringe on existing marks. A freedom to operate analysis by a trademark attorney evaluates potential conflicts and reduces legal exposure. Freedom to operate analyses often include more than one form of intellectual property, such as trademarks and copyrights. Many trademark attorneys are versed in other areas of intellectual property law. However, if a case or legal matter includes issues beyond trademark law, you should inquire whether your trademark attorney or other attorneys at their law firm can handle other areas of law.
This proactive assessment minimizes the risk of future trademark disputes and costly rebranding efforts.
Trademark attorneys also advise on licensing and assignment agreements. These documents allow others to use your mark under specific conditions or transfer ownership of a mark entirely. A trademark attorney can take basic objectives of a trademark license or other transaction and prepare a thorough written agreement that includes all important contract concerns under US trademark law, including the limits on the licensed use, quality control terms, auditing provisions, warranties, and other highly relevant terms for a trademark agreement.
Poorly drafted agreements can jeopardize trademark rights. Legal guidance ensures your brand is used correctly and consistently.
If your business operates globally or plans to expand overseas, a trademark attorney can coordinate international trademark applications through systems like the Madrid Protocol. Many trademark attorneys have the skills and resources to file for trademark rights in multiple countries efficiently, handle the unique requirements of foreign jurisdictions, and work with foreign counsel to acquire and enforce rights internationally.
A coordinated strategy ensures your brand is protected wherever you do business.
An experienced trademark attorney does more than handle filings, they act as a long-term partner in developing and managing your brand portfolio. A successful portfolio of brands requires ongoing legal advice tailored to your business goals, strategy for naming new products and services, risk mitigation for rebrands and mergers, and coordination with marketing and business teams.
This strategic support aligns your legal protection with your brand’s growth trajectory.
So, what does a trademark attorney do? They provide critical legal services that help business owners select, register, protect, and enforce their brand identities. An experienced attorney safeguards the value of your trademarks, reduces legal risk, facilitates stronger brand protection, enforces your trademark rights, and provides peace of mind
If you need assistance with your brand or have other trademark needs, contact our office for a free consultation. Our attorneys are skilled in all areas of intellectual property law.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
When launching a new product, service, or technology, you want to know whether you can do so without infringing third party intellectual property. To make this determination, it is often necessary to conduct a Freedom to Operate (FTO) search and analysis. An FTO analysis includes a search for patents in the relevant area of technology to evaluate whether you can make, use, sell, or import a product or process without infringing the valid intellectual property rights of others, particularly patents. Failure to secure FTO can result in costly patent infringement litigation that threatens your product, profits, and reputation.
This article provides an overview of FTO searches and analyses, and explains their role and value in business development in the patent context.
Freedom to Operate refers to the legal ability to develop, manufacture, use, market, sell, or import a product or process in a specific jurisdiction without infringing the valid intellectual property (IP) rights of others, most commonly patents. It is important to understand that FTO is not a right in itself, unlike a patent, which grants the holder the right to exclude others. Instead, FTO is a condition that must be verified through detailed analysis of the existing IP landscape to determine whether your actions would violate the enforceable rights of others.
It should be understood that owning a patent on your own innovation does not automatically confer the right to commercialize the patented technology. Patents are often incremental, and your invention may build upon or incorporate elements of prior patented technologies. As a result, even patented innovations can potentially infringe other existing patents or pending patent applications. Patentability concerns whether your invention is new and non-obvious; FTO concerns whether commercializing your invention infringes others’ rights.
A thorough freedom to operate analysis involves identifying relevant patents, reviewing the patent and its examination record to determine the meaning and scope of the patent claims, and assessing whether your product or process would fall within the scope of the patent claims. This proactive step is necessary to manage infringement risk and avoid costly patent litigation.
An FTO analysis is a critical component of any product development and commercialization strategy, and its importance spans several key stages of the business lifecycle. At the early stage of development, conducting an FTO search can help identify potential obstacles in product design and research and development, allowing companies to make adjustments before investing significant time and resources.
Prior to making a significant investment, whether in manufacturing, marketing, or distribution, an FTO analysis minimizes the risk of encountering unforeseen patent barriers that could halt progress or result in costly litigation. Patent infringement lawsuits can result in significant litigation costs, injunctions, and costly damage awards.
FTO analyses are also a key element of IP due diligence during licensing negotiations, mergers, acquisitions, and joint ventures, where freedom from third-party patent risk can materially affect the value of a deal. Without proper FTO, companies risk litigation, reputational damage, and significant business disruptions that could derail product launch or long-term profitability.
An FTO search is a foundational step in determining whether your new product, process, technology or other innovation may infringe on the patent rights of others. A patent search is conducted to identify relevant patents and patent claims that could impact your ability to bring the product to market without legal risk. This includes reviewing issued and enforceable patents, which are actively in force and could form the basis of an infringement lawsuit. It also involves analyzing pending patent applications (which are typically published 18 months after their initial filing date) that may eventually issue with enforceable claims. Furthermore, particular attention is paid to competitor patents, as these are the most likely to be enforced in the market space you’re entering.
Because IP rights are territorial, the FTO search must be conducted separately for each jurisdiction where you intend to manufacture, sell, or import the product, e.g., the US, UK, EU, Japan, and others. A finding of FTO in one country does not guarantee freedom in another, making it essential to tailor searches to each target market. Reliable tools for conducting such searches include public patent databases such as the USPTO, Espacenet (by the EPO), and WIPO’s Patentscope, which offer access to global patent documents. However, it should be understood that examining the patent itself is insufficient. The patent's examination record (the "prosecution history") must also be closely examined to determine how the patentee distinguished the patent claims from the prior art, which informs the meaning of the patent claims. The patent claims must be understood or construed in view of the entire patent record.
An FTO legal opinion from a qualified patent attorney is needed to properly assess the legal risks associated with launching a new product, process, or technology. An FTO opinion provides a detailed, reasoned assessment of whether the product or process is likely to infringe any identified patents, based on a review of relevant patent claims and the technical features of the innovation. These opinions are valuable at multiple stages of product development. They help inform design decisions, especially when modifications or design-arounds are necessary to avoid infringement.
In the context of investments, licensing deals, or acquisitions, an FTO opinion demonstrates thorough due diligence, increasing investor and partner confidence. Importantly, such opinions may also serve as a defense against allegations of willful infringement, potentially limiting exposure to enhanced damages in litigation.
A standard FTO opinion typically includes a detailed description of the product or technology, the search strategy and databases used, a thorough assessment of infringement risk, and a legal analysis of the scope of potentially relevant patent claims. This structured format ensures that the analysis is comprehensive, legally sound, and clearly communicated to business stakeholders.
Your freedom to operate is not a one-time determination, it is a dynamic assessment that must evolve alongside changes in both your product and the broader patent landscape. Over time, new patent applications are published, existing patents may expire, and new patents are granted, all of which can impact your infringement risk. In addition, as your product undergoes refinements during the development cycle, features that were not previously at issue may suddenly fall within the scope of an existing or newly issued patent. Therefore, what was once a low-risk assessment may shift, exposing your business to potential legal threats if not properly monitored.
To mitigate these risks, it is critical to follow several best practices. First, always update your FTO analysis after any significant product design changes. Second, actively monitor patent filings from key competitors, as these may signal future IP barriers. Third, make it a policy to reassess your FTO status periodically in all relevant jurisdictions where you intend to operate.
One effective strategy for managing patent infringement risk is to modify your product or process to avoid falling within the scope of a competitor’s patent claims, if possible. This approach, known as “designing around,” enables businesses to move forward with commercialization while minimizing the likelihood of legal disputes. The process begins by carefully analyzing and construing the relevant patent claims to identify specific claim limitations, the elements that define the legal boundaries of the patented invention. Once these limitations are understood, the product or process may be altered to omit or substitute one or more of those elements, thereby aiming to avoid infringement.
However, designing around is not merely a technical exercise, it must be validated through legal analysis. After the design changes are implemented, a follow-up analysis should be conducted to confirm that the revised product or process does not fall within the scope of the identified patent claims. This verification ensures that the redesign successfully mitigates the infringement risk.
If a patent presents a significant infringement risk and designing around is not technically or commercially feasible, there are still several strategic options available to mitigate liability. One common approach is to negotiate a license with the patent holder, which provides the legal right to use the patented technology in exchange for agreed-upon terms, often including royalties.
Alternatively, a company may seek to acquire the patent outright, thereby eliminating the risk entirely. In some cases, it may be appropriate to challenge the validity of the patent through formal mechanisms such as ex parte reexamination, post-grant review, opposition proceedings, or patent litigation. Each of these approaches involves different costs, timelines, and levels of legal risk. Some may be quicker but less certain, while others are more resource-intensive but potentially more definitive. For this reason, it is essential to consult with experienced patent counsel to evaluate and implement the most effective risk management strategy.
Freedom to operate studies can require a significant investment of time and resources, especially in complex and highly competitive industries like biotechnology, pharmaceuticals, or electronics, where overlapping patents and dense patent landscapes are common. However, the cost of an FTO analysis is almost always far less than the expense of defending a patent infringement lawsuit. Several factors influence the overall cost, including the breadth of the product scope, the number of jurisdictions being analyzed, the technical complexity of the product or process, and the volume of potentially relevant patents. To manage these costs effectively, businesses should begin the FTO process early in product development and carefully define both the geographic reach and technical focus of the analysis.
One of the most instructive historical examples of freedom to operate (FTO) in practice is the U.S. automobile industry’s confrontation with the Selden patent in the early 20th century. George Selden obtained U.S. Patent No. 549,160 in 1895, which broadly claimed the concept of a gasoline-powered automobile. The patent was licensed exclusively to the Electric Vehicle Company, which in turn formed the Association of Licensed Automobile Manufacturers (ALAM) to enforce the patent and extract royalties from car manufacturers.
The upstart Ford Motor Company refused to join the ALAM or pay royalties, believing that the Selden patent did not cover its vehicles. Ford commissioned a detailed FTO analysis by patent attorney Ralzemond Parker, who concluded that Ford’s engine technology, which was based on the Otto cycle, was materially different from the Brayton-cycle engine described in the Selden patent. Based on this legal opinion, Ford publicly indemnified its customers and continued production.
The dispute culminated in Columbia Motor Car Co. v. C. A. Duerr & Co., 184 F. 893 (2d Cir. 1911), where the Second Circuit ultimately held that Ford’s automobiles did not infringe the patent, validating Ford’s position and FTO strategy.
This landmark case underscores the power of a thorough FTO analysis in guiding business decisions and resisting overbroad patent assertions. It also illustrates how legal clarity, grounded in technical distinctions and claim construction, can provide the foundation to proceed confidently in the face of aggressive enforcement efforts.
A proper freedom to operate strategy is essential due diligence prior to launching any new technology, product, or service. It allows your company to proceed with development and commercialization while limiting legal exposure.
While no FTO opinion can offer a 100% guarantee, the process of conducting FTO searches, reviewing identified patents, and obtaining legal guidance is critical to making informed, strategic decisions. By treating FTO analysis as an integral part of your due diligence, you improve your chances of a successful, sustainable market entry.
If you need to discuss an FTO analysis, patentability search, infringement analysis, or other patent matter, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A trademark license agreement is a transaction in which one business (licensor) allows another (licensee) to lawfully use the licensor's trademark in exchange for a licensing fee. A trademark license agreement allows a licensee to leverage a licensor's established brand recognition without owning the mark. For the licensee, the agreement provides rapid market entry, reduced marketing costs, and access to consumer trust. For licensors, trademark licensing generates revenue and extends brand reach without direct expansion.
License agreements are essential in franchising, merchandising, and co-branding strategies. When properly structured, they protect brand value while enabling commercial growth. Without a license, unauthorized use may constitute trademark infringement, exposing the unauthorized user to legal liability. Trademark licenses are effective tools for monetizing intellectual property and scaling operations efficiently within defined legal and quality control boundaries.
For business owners unfamiliar with intellectual property law, learning how these agreements work may translate into a better understanding of the value of strong trademarks and the business opportunities available through trademark licensing. This guide explains the key provisions and practical considerations of a trademark license agreement in plain language.
A trademark license agreement is a legally binding contract in which the licensor grants certain rights to a licensee to use the mark in connection with specified goods or services, in exchange for compensation. Licensing is often used when the licensor wants to expand into a new geographic area, industry, or marketing channel without directly operating there. For example, a clothing company might license its mark to a retailer to develop clothing stores under the clothing company's trademark. These agreements can cover service marks and traditional trademarks, and typically define rights concerning use, exclusivity, quality control, territory, and termination.
A trademark license can be based on a common law trademark, a state trademark registration, or a federal trademark registration. Each form provides differing levels of legal protection, geographic scope, and evidentiary advantages.
Common law trademarks arise automatically through use of a mark in commerce, even without registration. They are enforceable within the geographic area where the mark is used and recognized by consumers. While sufficient to form the basis of a license, they offer limited protection and are harder to enforce, particularly across state lines.
State trademark registrations provide protection within the boundaries of the registering state. They offer some procedural benefits, such as inclusion in a searchable database, but remain limited in scope. State registration may be appropriate for purely local businesses but lacks the national presumption of validity provided by federal law.
Federal trademark registrations, issued by the United States Patent and Trademark Office (USPTO), offer the strongest legal foundation for a license. They provide nationwide constructive notice of ownership (15 U.S.C. § 1072), a legal presumption of validity and exclusive right to use the mark nationwide (15 U.S.C. § 1115), and the ability to bring suit in federal court. A federally registered trademark can also be recorded with U.S. Customs and Border Protection to prevent the importation of infringing goods.
In a licensing context, federal registration gives licensors stronger control and enforcement options and enhances the marketability of the license. Licensees are more likely to invest in promoting a brand backed by a valid, enforceable federal trademark registration.
While each agreement is tailored to specific business goals, most include these essential elements:
This clause specifies what rights are being granted. It defines:
Courts have emphasized that a valid trademark license must include provisions for quality control to ensure that the licensor maintains control over the nature and consistency of the goods or services offered under the mark. See Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011). Without such oversight, the arrangement may be deemed a "naked license," which occurs when a licensor allows use of its trademark without retaining control over product or service quality. See FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010). Naked licensing can result in abandonment of the trademark under the Lanham Act, rendering the mark unenforceable and potentially destroying its value entirely.
The licensor is legally required to maintain control over the nature and quality of goods or services sold under the licensed mark. This obligation reflects a core principle of trademark law: the protection of consumers. Trademarks function as source identifiers, assuring consumers that the products or services bearing the mark originate from a single source and meet consistent quality standards. When a trademark is licensed, quality control provisions help preserve that assurance by preventing variations that could mislead consumers.
Courts have long held that this requirement safeguards not only the goodwill of the trademark owner but also the public interest in reliable purchasing decisions. If a licensor fails to monitor the licensee’s use of the mark, it risks engaging in “naked licensing,” which can result in the loss of trademark rights. The licensor does not need to control or constantly monitor the licensee's operation. However, quality control provisions must be present in a trademark license agreement and provide the licensor reasonable oversight (e.g., approval of the licensee's proposed trademark use and semiannual product reviews).
Trademark license agreements typically include detailed payment provisions tailored to the commercial goals of both the licensor and licensee. Common compensation structures include flat fees, which are one-time or periodic lump-sum payments for the right to use the trademark. These may be appropriate for short-term or narrowly scoped licenses.
More commonly, licensors receive royalties based on the licensee’s sales of products or services bearing the licensed mark. This approach aligns the licensor’s compensation with the success of the licensee’s use and incentivizes both parties to maximize revenue. Royalties may be calculated as a percentage of gross or net sales, and may include additional provisions defining deductible expenses or adjustments for returns. A central principle in royalty negotiations is that the royalty rate should reasonably reflecting the fair market value of the trademark. However, the parties to the agreement are free to define the rate upon mutual agreement.
Agreements often incorporate minimum royalty requirements, which obligate the licensee to pay a specified amount regardless of actual sales. This protects the licensor from underperformance. In some cases, “most favored nation” clauses are included to ensure the licensor receives terms at least as favorable as those granted to any other licensee of the same mark.
Additional compensation terms may require reimbursement of advertising or promotional expenses incurred by the licensor, particularly when cooperative marketing efforts are involved.
The term of a trademark license agreement can be either for a fixed duration, such as one, three, or five years, or perpetual, subject to specific conditions. Agreements often include provisions for automatic renewal or renewal upon mutual agreement, provided certain performance metrics or compliance standards are met. Termination clauses are critical and typically permit one or both parties to terminate the license early in cases of material breach, such as nonpayment of royalties, unauthorized use, failure to maintain quality control, or the insolvency or bankruptcy of either party. These clauses must be drafted with clarity to ensure enforceability and predictability.
A comprehensive agreement will also outline the notice requirements for termination, including the form, delivery method, and timing of such notice. Post-termination obligations should be explicit, particularly regarding whether the licensee must immediately cease all use of the trademark, destroy related marketing materials, and cooperate in de-branding efforts to prevent ongoing consumer confusion or inadvertent infringement after the license ends.
To allocate risk, most agreements include indemnity provisions. Licensors are sometimes asked to indemnify the licensee against third-party claims of trademark infringement. However, this can expose the licensor to significant liability, so licensors often limit indemnity to “known claims” or include disclaimers of warranty.
Third-party infringement claims pose significant risks to licensees, potentially halting operations, disrupting supply chains, or damaging valuable customer relationships. To manage this risk, trademark license agreements often include indemnity provisions, which function like insurance policies, requiring the licensor to defend or reimburse the licensee for losses arising from trademark disputes. These clauses are particularly important when a licensee relies heavily on the licensed mark to market and sell products or services.
However, licensors must carefully structure indemnity obligations to avoid assuming unlimited liability. Rather than agreeing to blanket indemnification, licensors often limit their obligations to claims that result from their own breach of warranty, misrepresentation, or negligence. Additionally, agreements typically require the licensee to provide prompt notice of any third-party claims to allow the licensor to respond in a timely and strategic manner.
Licensors may also reserve the right to approve or control settlement decisions, ensuring that the resolution of any claim aligns with their business and legal interests. These limitations help strike a fair balance between protecting the licensee and preventing the licensor from bearing excessive or unforeseeable risk, especially in complex or uncertain enforcement landscapes.
Trademark licensing offers significant strategic and financial benefits for both licensors and licensees. For companies that own well-known or even moderately recognized trademarks, licensing creates an opportunity to monetize underutilized assets, generate passive revenue streams, and expand into new markets without bearing the full risk and cost of direct operations.
From the licensee’s perspective, gaining access to an established trademark allows a business to reduce marketing and promotional costs, enhance consumer trust, and accelerate product acceptance by leveraging existing brand recognition. This is especially valuable for startups or companies entering new geographic or product markets.
For the licensor, licensing provides a means to extend brand visibility, increase market penetration, and generate income while still retaining ownership and control over the trademark. The ability to grant only certain rights, such as use in a defined territory or for a specific class of goods, preserves long-term brand value and strategic flexibility.
However, the success of any trademark licensing venture depends heavily on clear contractual terms, rigorous quality control, and the involvement of experienced legal counsel to mitigate risk and prevent disputes.
A trademark license agreement is a powerful tool that, when executed properly, can deliver substantial commercial benefit while safeguarding the interests of both the licensor and licensee. However, failure to address key provisions, such as quality control, compensation, liability, and termination, can jeopardize the value of the mark and expose the company to substantial legal risk.
Whether you're licensing a mark to grow your business or seeking to leverage someone else’s brand, it’s essential to involve experienced legal counsel, verify the validity of the mark, and ensure that all obligations are clearly defined and binding.
If you are considering entering a trademark licensing situation or other trademark matters, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
U.S. patent law provides for both injunctive relief, which halts infringing activity, and monetary compensation for the harm suffered by the patent holder. The monetary compensation may be measured in the patent holder's lost profits or a reasonable royalty that the infringing party would have paid. Also, in some cases, a jury may award enhanced damages in exceptional cases where the defendant acted egregiously.
Patent infringement is a potential issue for any business developing new products and services. It is important to understand the risk of patent infringement and the monetary damages that might result from infringement. The types of patent damages are explored in more detail below.
When a defendant is found liable for patent infringement, U.S. law ensures that the patent owner receives fair compensation. Under 35 U.S.C. § 284 of the Patent Act, once a court determines that a defendant's infringement has occurred, it must award the patentee "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty" for the unauthorized use of the patented invention. These damages are designed not to punish the infringer, but to restore the patent holder to the financial position they would have been in had the infringement not occurred. However, if the infringement is proven to be willful, the court may award enhanced damages, up to three times the compensatory amount.
The law recognizes two main forms of compensatory damages:
Lost profits are one of the most significant categories of patent infringement damages because they aim to place the patent owner in the financial position they would have occupied “but for” the infringement. In other words, these damages are meant to compensate for the sales, market share, and profits the patentee lost due to the infringer unlawfully making, using, or selling the patented product.
To succeed in a claim for lost profits, the patentee must present evidence at trial that satisfies a four-part test established in Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152 (6th Cir. 1978). The elements are:
In addition to diverted sales, courts may consider other economic harms, such as price erosion (where the infringer’s competition forces the patentee to lower prices), increased costs (from fighting to maintain market share), and convoyed sales, losses on related products or services sold in conjunction with the patented item (e.g., parts, accessories, or maintenance services).
Proving lost profits often requires detailed financial records and expert testimony, and it can be particularly challenging when the patent owner is not actively selling the product. In such cases, courts typically award reasonable royalty damages instead.
When a patent owner cannot prove lost profits, they are still entitled to damages under the Patent Act, specifically, a reasonable royalty. Under 35 U.S.C. § 284, “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer”. This provision guarantees a minimum baseline of compensation and ensures that patentees receive some remuneration even when actual losses are difficult or impossible to quantify.
A reasonable royalty is calculated based on a hypothetical negotiation between a willing licensor and a willing licensee at the time the infringement began. This legal fiction allows courts to simulate what the parties would have agreed upon in a good faith license negotiation, had infringement not occurred. The foundational authority for evaluating reasonable royalties comes from Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), which identified 15 non-exclusive factors relevant to determining the royalty rate. These include:
One key legal requirement is apportionment, the process of ensuring that damages reflect only the value of the patented feature, and not the value of the entire product unless the patented feature drives consumer demand. The Federal Circuit has emphasized that “a patentee is only entitled to a reasonable royalty attributable to the infringing features”. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965, 977 (Fed. Cir. 2018). This rule is particularly important in the context of complex, multi-component products, such as smartphones or software systems.
Courts often require use of the smallest salable patent-practicing unit as the royalty base to avoid overcompensation, unless the entire market value rule (EMVR) applies, i.e., when the patented component drives the demand for the entire product. LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012).
To support a damages award, expert testimony is typically required and must be grounded in economic rigor and factual evidence. Courts have excluded speculative or unsupported opinions, emphasizing the need for reliable methodologies and factual ties between the royalty and the extent of infringement. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336–37 (Fed. Cir. 2009).
Thus, the reasonable royalty framework acts as both a statutory safeguard for patentees and a critical analytical tool for courts in patent infringement cases.
In addition to compensatory damages, courts may award enhanced damages, up to three times the amount of actual damages, under 35 U.S.C. § 284 when willful infringement is proven. However, enhanced damages are not available in every infringement case. The Supreme Court in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), clarified that such damages are reserved for "egregious cases of misconduct beyond typical infringement", and courts have broad discretion to determine whether enhancement is appropriate.
The Halo Court rejected the prior Seagate test, which had required clear and convincing evidence of objective recklessness, finding that it was overly rigid and inconsistent with the discretionary language of § 284. Instead, Halo emphasized that willfulness should be assessed based on the infringer’s subjective bad faith at the time of the conduct, and that culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.
Key factors that courts consider when determining whether to enhance damages include:
See Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992).
Because the inquiry is fact-intensive and centers on intent, companies should document good-faith efforts to avoid infringement, such as conducting freedom-to-operate analyses, obtaining legal opinions, and designing around patents. These proactive steps may help a court find that the infringement was not willful, thereby avoiding exposure to treble damages.
Patent litigation can be costly, unpredictable, and disruptive. Whether you’re a patent owner seeking damages or a defendant facing exposure and seeking to limit damages, understanding how courts assess infringement damages is critical. For business owners, here are some practical takeaways:
If you need assistance with a patent dispute or other patent matter, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Trademarks vary in their distinctiveness and ability to uniquely identify a source of goods or services. Some marks are inherently distinctive and can function as trademarks right away. For example, NIKE is a distinctive trademark with respect to athletic wear and shoes because it has no meaning with respect to sportswear and shoes except for the brand identity. Other marks are descriptive of goods or services, such that they are likely to be commonly used in connection with particular goods or services. A mark like DISCOUNT SHOES is descriptive of inexpensive shoes, the goods sold under the mark. Also, many businesses use this phrase to advertise their business, and thus it is not distinctive. Such descriptive, indistinctive marks do not carry enforceable trademark rights when they are adopted to promote a business.
However, a descriptive mark can build meaning in the mind of consumers over time. For example, INTERNATIONAL BUSINESS MACHINES is a descriptive mark, but because of its longstanding use and investment in advertising and promoting the brand, the INTERNATIONAL BUSINESS MACHINES mark has acquired distinctiveness in the mind of the consumer. Acquired distinctiveness, also known as secondary meaning, results in enforceable trademark rights in what was once an unenforceable descriptive mark.
A descriptive trademark directly conveys an immediate idea of the qualities, characteristics, purpose, or features of the goods or services it represents. For example, “Creamy Yogurt” for a yogurt product simply describes the texture of the goods and does not inherently distinguish the source. Because descriptive marks do not automatically function as source indicators, they are not registrable on the Principal Register without proof of acquired distinctiveness. In contrast, arbitrary marks use common words in an unrelated context, such as “Apple” for computers, while fanciful marks are invented terms with no prior meaning, like “Xerox” or “Kodak.” Both arbitrary and fanciful marks are considered inherently distinctive, making them eligible for immediate registration and stronger legal protection. Unlike descriptive marks, they do not require evidence of consumer recognition of the source of the goods because their uniqueness alone makes them effective at identifying origin.
Acquired distinctiveness, also known as secondary meaning, is the process by which a descriptive trademark or service mark, initially incapable of registration on the United States Patent and Trademark Office (USPTO) Principal Register, gains distinctiveness through use in commerce such that it comes to identify a single source in the minds of the consuming public. Under Section 2(f) of the Lanham Act (15 U.S.C. § 1052(f)), a mark that is “merely descriptive” may be registered if the applicant can demonstrate that “as a result of substantially exclusive and continuous use,” the mark has “become distinctive of the applicant’s goods [or services] in commerce.”
The legal policy behind the acquired distinctiveness doctrine balances two core interests: (1) protecting consumers from confusion about the source of goods or services and (2) encouraging fair competition by ensuring that common or descriptive terms are not monopolized prematurely. Courts have emphasized that allowing registration of descriptive marks only after secondary meaning is proven ensures that protection is granted only when the mark actually functions as a source indicator. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992) and Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000).
The doctrine originates from common law unfair competition principles and was codified in federal trademark law to prevent the unfair appropriation of language necessary for competitors to describe their own goods. It reflects the broader goal of the Trademark Act: protecting consumers and preserving a fair and competitive marketplace. The USPTO Trademark Manual of Examining Procedure (TMEP) explains that “a mark that is merely descriptive of the goods or services must acquire distinctiveness in order to be registrable on the Principal Register" (TMEP §1212). This acquisition must be demonstrated through evidence showing the primary significance of the mark in the minds of consumers is the producer, not the product or service itself.
Imagine a small bakery business called “Freshmade” that sells artisanal baked goods made daily from scratch. The owner chooses this name because it directly describes the key selling point of the business, daily fresh-baked goods. It’s intuitive, straightforward, and she believes it will appeal to customers looking for homemade-style treats.
At first, the name “Freshmade” helps the business convey exactly what it offers. However, because the name is so descriptive of the nature of the goods, it doesn't stand out from competitors. Several other bakeries in the area use similar phrases like “Fresh Baked Treats” or “Freshly Baked Goods,” which makes it hard for customers to remember or distinguish the brand. As a result, the name doesn’t function well as a source identifier, a key requirement of a trademark. Over time, the owner realizes that despite loyal customers, new customers often confuse her brand with others offering similar products.
When she applies to register “Freshmade” with the USPTO on the Principal Register, the examining attorney issues an Office Action refusing the trademark application under 15 U.S.C. § 1052(e)(1) because the mark is merely descriptive of the goods. The USPTO notes that the phrase simply describes a feature or characteristic of the cookies, rather than serving as a unique brand name. She has only been in business for two years and she does not have a strong basis for demonstrating that the mark has acquired distinctiveness.
Because she cannot show that consumers associate the phrase “Freshmade” specifically with her business, her application is ultimately refused. She may still register the mark on the Supplemental Register, but this does not provide the same legal benefits or presumptions of validity as registration on the Principal Register.
In scenarios like the Freshmade story above, the trademark owner may seek registration on the Principal Register once the trademark use meets certain requirements. A trademark applicant can make a claim of acquired distinctiveness under Section 2(f) if there is sufficiently extensive use and/or other evidence that the trademark has acquired distinctiveness in the minds of the relevant consumers. To prove that a descriptive mark has acquired distinctiveness, applicants can provide various forms of evidence:
If the applicant owns one or more prior registrations of the same mark on the Principal Register for similar goods or services, this can serve as prima facie evidence of distinctiveness. However, the prior registration must be in full force and not expired or canceled.
A declaration stating that the mark has been in substantially exclusive and continuous use in commerce for at least five years preceding the date of the claim can support acquired distinctiveness. It is important to note that mere use of the mark is insufficient. The use must be exclusive and continuous.
This includes a variety of materials for proving acquired distinctiveness:
Claiming acquired distinctiveness presents a significant evidentiary burden for the applicant, particularly when the mark in question is weak or widely used. The standard is especially high for highly descriptive marks, which directly convey characteristics, ingredients, or qualities of the goods or services. Such marks require robust, persuasive evidence to establish that the primary significance of the mark in the minds of consumers is to identify the source rather than the product itself. The challenge is further compounded when the mark is commonly used by others in the same industry. If third parties are using similar terms to describe their products or services, it weakens the applicant’s argument that the mark is perceived as distinctive or uniquely associated with their brand. Additionally, limited advertising or promotion can make it difficult to demonstrate the necessary level of consumer recognition or association with a single source. In In re Yarnell Ice Cream, LLC, the Trademark Trial and Appeal Board (TTAB) rejected a claim of acquired distinctiveness for the mark “SCOOP” for ice cream, finding it highly descriptive and noting that the applicant failed to present sufficient evidence of secondary meaning, despite five years of use and some media coverage.
Securing trademark protection is vital for brand identity and legal rights. Understanding the difference between descriptive marks and more distinctive mark can prevent issues with the trademark application process and trademark enforcement. However, it is common for businesses to adopt descriptive marks for various business reasons. In such cases, evidence of acquired distinctiveness may be utilized to acquire a trademark registration and to establish enforceable trademark rights in court.
If you need assistance with trademark selection, vetting, registration, or other trademark matters, please contact us for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
It is generally known that patents allow the owner exclusive rights to exploit an innovation. However, the period of that protection is limited. There is a basic quid pro quo that underlies US patent law: if you develop a new and useful invention, you can have exclusive rights to that invention for a defined time period, but then it enters the public domain and anyone can use it to their benefit. Many people do not understand this bargain or that the patented technology is free to use after a patent expires. Entrepreneurs and technologists can analyze expired patents to adopt, adapt, or build upon the underlying invention without paying licensing fees.
Lapsed patents work differently. A utility patent can lapse due to a failure to pay required patent maintenance fees. The public can lawfully use the technology in a lapsed patent. However, if the patent lapsed due to inadvertent failure to pay the maintenance fees, the patent owner may later revive the patent. Thus, practicing the invention of a lapsed patent carries some risk and should be considered with the guidance of a skilled patent attorney.
In this article, we discuss legal framework of expired and lapsed patents and the legal issues related to utilizing the formerly patented technology.
When a patent expires, the exclusive rights granted to the patent owner, including the right to exclude others from making, using, or selling the invention, come to an end. At that point, the intellectual property becomes part of the public domain, and anyone can use it without fear of infringement.
Uninformed entrepreneurs (e.g., inventors, small businesses, etc.) may miss out on valuable opportunities by overlooking the benefits of using expired patents. For example, if a consumer electronics patent from 20 years ago has expired, you may be able to use its original invention as a foundation for further innovation, saving time and R&D costs.
In the United States, patents are governed by federal patent law and administered through the United States Patent and Trademark Office (USPTO). The USPTO has a public patent database of all issued patents that allows anyone to find patented technology relevant to their business or field. You can search by keyword, inventor name, patent number, assignee, or filing date. Once you locate a patent, PDF or image files of the patent are viewable. To determine whether the patent has expired, you can look at the filing date, issue (grant) date, and the type of patent (utility, design, or plant) on the first page of the patent. For utility patents filed after June 8, 1995, the term is generally 20 years from the filing date. However, there are some nuances to determining the filing date.
Accurately identifying the effective filing date is required to determine the patent's term and expiration date. To determine the effective filing date of a utility patent from the first page of the patent document, which includes various data sections identified by Internationally Agreed Numbers for the Identification of Data (INID codes), found in parentheses on the left side of each column. If the patent was the result of a single application with no claims to prior filed provisional or parent applications, the patent term will be determined based on the filing date of the application. The “Filed” field (22) found in the first column of the first page provides the date on which the application was filed. However, if the patent claims benefit of an earlier non-provisional patent application (e.g., a parent application), the effective filing date will be the date of the earliest validly claimed non-provisional patent application listed in the “Related U.S. Application Data” section (63).
If a patent claims priority to any prior non-provisional patent filings, the “Related U.S. Application Data” section lists the any continuation, continuations-in-part, and/or divisional priority claims, along with the corresponding filing dates. The effective filing date is the earliest date on which the subject matter claimed in the patent was first disclosed in an earlier non-provisional patent application to which the patent validly claims priority.
When a patent lists only priority claims to divisional and/or continuation patents in the “Related U.S. Application Data” section, the effective filing date is generally the earliest filing date in that chain (see the image below), assuming the claims are fully supported by the original disclosure. If the list includes a priority claim to a continuation-in-part (CIP), the effective filing date for each claim depends on whether it is supported by the earlier application. Claims supported by the original parent application (earliest filed non-provisional) retain the parent’s date; new matter introduced in the CIP gets the CIP’s filing date. Determining the correct date may require reviewing the specifications of all listed applications.
Section (60) identifies any priority claims to provisional patent applications. However, these priority claims do not impact the 20 year patent term. They are irrelevant to determining when the patent expiration date.
Foreign priority claims under 35 U.S.C. § 119 do not affect the patent term in the United States. While they establish an earlier priority date for determining novelty and non-obviousness, the patent term is still calculated from the actual U.S. filing date of the non-provisional application, not the foreign priority date. Foreign priority can strengthen patent validity by reducing the amount of available prior art, it does not shorten or extend the statutory patent term in the U.S.
Any Patent Term Adjustment (PTA) or Patent Term Extension (PTE) granted for a patent is typically noted in the “Notice” section on the first page of the issued patent. However, these two extensions arise under different statutes, serve different purposes, and apply under different circumstances.
Patent Term Adjustment, governed by 35 U.S.C. § 154(b), compensates for delays caused by the USPTO during prosecution. This includes delays such as extended examination, failure to meet response deadlines, or time spent in appeal. The adjustment is automatically calculated and expressed as a number of days added to the standard 20-year term from the earliest effective filing date of a utility patent. PTA applies only to utility patents, not design or plant patents.
Patent Term Extension (PTE) is granted under 35 U.S.C. § 156 and applies to patents covering products subject to regulatory review, such as pharmaceuticals, medical devices, and agricultural chemicals. PTE compensates for the time lost while waiting for FDA or other regulatory approval before a product can be marketed. PTE is granted upon request, and if awarded, the extension is noted on the face of the patent, often with language such as “180-day patent term extension granted.”
Both PTA and PTE extend the enforceable life of the patent beyond the standard term, but they are based on different causes of delay, administrative delays for PTA and regulatory delays for PTE, and are authorized by separate statutory provisions.
A terminal disclaimer is a legal statement filed with the USPTO in which a patent applicant agrees to limit the term of a later-filed patent so it expires no later than an earlier related patent, often in the same patent family. This is typically done to overcome a non-statutory double patenting rejection, where two patents claim obvious variations of the same underlying invention. The terminal disclaimer ensures that the public does not suffer from extended patent protection for obvious variants of the same invention.
Terminal disclaimers affect the patent’s term by cutting it short, aligning its expiration with the earlier patent's expiration date. Importantly, terminal disclaimers also require that the patents remain commonly owned. If ownership is later divided, the disclaimed patent may become unenforceable.
This principle was confirmed in In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013), where the Federal Circuit upheld the requirement for common ownership of patents subject to a terminal disclaimer. The court emphasized that separating ownership undermines the basis for the disclaimer, preventing unjustified time extensions of exclusive rights. Thus, a patent holder should carefully manage licensing agreements and assignments in families with terminal disclaimers to avoid unenforceability of valuable patent assets.
The patent term of a U.S. national stage application filed under 35 U.S.C. § 371, based on an international Patent Cooperation Treaty application (PCT), is generally 20 years from the international filing date of the PCT application, not the date of national stage entry. The same term calculation is applied to national stage applications as to regular U.S. utility applications using the PCT application date as the priority date. Therefore, even if national stage entry occurs up to 30 months later, the 20-year term still begins from the PCT’s international filing date. If the PCT application claims priority to an earlier foreign patent application under 35 U.S.C. § 119, that foreign priority date does not affect the term, it only affects patentability. Additionally, PTA and PTE are applicable and may extend the term.
Determining a patent’s expiration requires careful consideration of its priority dates, any patent term extensions (PTEs), and the presence of terminal disclaimers. The priority date, often the earliest effective filing date listed in the “Related U.S. Application Data” section, establishes the starting point for calculating the standard 20-year term for utility patents. Any granted PTE adds days to this term to compensate for USPTO or regulatory delays. However, a terminal disclaimer can override the calculated term by shortening it to match the expiration of an earlier related patent. When a terminal disclaimer is present, determining the correct expiration date may require reviewing the file wrapper (the patent’s prosecution history) to identify the prior patent to which the disclaimer is tied and whether that earlier patent remains enforceable. Without this context, expiration dates on the face of the patent may be misleading. Therefore, analyzing all of these elements together is essential for accurately assessing a patent’s term.
Although patents are granted for a specific term, they can expire early or lapse for a variety of reasons. Understanding the different pathways to expiration is essential for entrepreneurs that plan to use, license, or build upon a technology patented by someone else, and for the patent holder themselves. Misinterpreting a patent’s status can lead to legal risks or missed opportunities for either kind of party. Below are several common scenarios that may lead to early expiration or lapse of intellectual property rights.
A patent naturally expires when it reaches the end of its statutory term, which is typically 20 years from the earliest effective filing date. Once this term expires, the patent owner no longer has the exclusive rights to prevent others from making, using, or selling the invention. At that point, the patented technology enters the public domain, where it may be freely used by competitors and the public. Natural expiration is the most straightforward method by which a patent ends. However, it is quite common for the filing and prosecution history of the patent to be more complicated. In such circumstances, close attention must be paid to filing dates, patent term extensions, and other factors to calculate accurately. Businesses analyzing expired patents should always verify the correct term based on the type of patent and applicable rules.
For utility patents, the patent office requires the patent holder to pay maintenance fees at 3.5, 7.5, and 11.5 years after the patent is granted. Failure to make timely payments causes the patent to lapse and become unenforceable. However, the USPTO provides a six-month grace period during which the patent owner can reinstate the patent by paying the overdue fee along with a surcharge. If the owner fails to take action within that time, the patent will be considered lapsed. However, even if a patent lapses, it may still be reinstated under certain conditions, which can complicate determinations of enforceability. If the patent lapsed due to inadvertent error, it can be revived. Businesses considering use of lapsed patents should consult with patent attorneys to assess the risk that the patent holder will revive the patent and whether intervening rights may apply to safeguard their activities.
A terminal disclaimer is filed to overcome a non-statutory double patenting rejection by aligning the term of one patent with that of an earlier related patent in the same family. When this occurs, the disclaimed patent will expire no later than the earlier patent’s expiration date, even if it would otherwise qualify for a longer term. This can significantly shorten the duration of patent protection. Terminal disclaimers also require that both patents remain commonly owned for enforceability. If the patents become separately owned through sale, transfer, or licensing, the disclaimed patent may become unenforceable, as clarified by Federal Circuit case law such as In re Hubbell. To accurately determine expiration, especially in complex families, it may be necessary to review the file wrapper and identify which patent the terminal disclaimer references. Overlooking a terminal disclaimer can result in relying on a patent that has already expired.
A patent can also cease to be enforceable through judicial invalidation. U.S. federal courts, including the Supreme Court, may declare a patent invalid or unenforceable for several reasons, including lack of novelty, obviousness, failure to meet written description requirements, or inequitable conduct during prosecution. When a patent is invalidated by court ruling, it is as if the legal right never existed. This outcome applies retroactively and can affect licensing agreements, infringement lawsuits, and business strategies built around the patent. Companies relying on active patents, especially in competitive fields like consumer electronics, pharmaceutical patents, and power systems, should stay informed about relevant litigation that may impact the enforceability of key patent assets. It is important to note that a patent listed as active in the USPTO database may still have been nullified by court action, so legal status checks should always include a litigation search.
In rare but impactful cases, changes in patent law or regulatory exclusivity rules can affect whether a patent remains enforceable or how long its term lasts. This is particularly relevant to pharmaceutical patents and biologics, where legislation such as the Hatch-Waxman Act or the Biologics Price Competition and Innovation Act (BPCIA) may shorten or extend effective exclusivity periods. Additionally, international treaties and domestic reforms may alter how patent terms are calculated or whether international protection is available. Some reforms have introduced patent term adjustments (PTAs) or eliminated extensions under certain circumstances. Businesses should monitor legislative developments to assess how they might impact patent strategy, particularly for products reliant on extended exclusivity for market entry or licensing revenue. Consulting with experienced patent attorneys is critical to understanding how evolving rules may affect the enforceability or term of a particular patent portfolio.
Once a patent expires, it enters the public domain, meaning the exclusive rights previously held by the patent owner no longer apply. For large and small businesses alike, this opens the door to using the underlying invention for product development, manufacturing processes, or commercialization without needing a license or worrying about infringement claims. Expired patents serve as a rich source of technical knowledge and proven designs, making them valuable tools for businesses looking to further innovation with reduced legal risk and lower R&D investment.
The expiration of a patent is in the public domain: anyone is legally free to use, make, sell, or improve upon the previously protected invention without obtaining permission or paying licensing fees. This allows new market entrants to build upon old patents, especially in industries like consumer electronics, manufacturing, and pharmaceuticals. For instance, when pharmaceutical patents expire, generic manufacturers can produce equivalent drugs at lower costs, often resulting in increased accessibility for consumers and new business opportunities for manufacturers. In other industries, expired patents can form the basis for product lines, reduce development timelines, or inspire entirely new solutions. Reviewing and analyzing expired patents can give businesses a competitive edge while fostering innovation.
Lapsed patents may not be permanently unenforceable. In some cases, a patent holder can reinstate a lapsed utility patent by paying overdue maintenance fees within the USPTO’s six-month grace period. In limited circumstances, reinstatement may also be granted beyond that period through a successful petition showing that the lapse was unintentional. When a patent is reinstated, it regains enforceability, but not without consequences for third parties.
If a business began using the invention during the lapse in good faith, it may acquire intervening rights under patent law. These rights can shield the user from infringement liability, particularly for products made, purchased, or developed while the patent was unenforceable.
Intervening rights are statutory defenses available to third parties who, in good faith, begin using, making, or selling a patented invention during a period when the patent is unenforceable, such as after lapse due to nonpayment of maintenance fees or after a substantial amendment to claims in a reissue or reexamination proceeding. These rights are codified in 35 U.S.C. § 41(c). While often discussed in the context of post-grant proceedings, courts have extended these principles to lapsed and later-reinstated patents.
There are two categories of intervening rights:
Absolute rights allow a third party to continue using or selling specific products that were made, purchased, or contracted for before the patent was reinstated. These rights are not discretionary, they are granted as a matter of law if the activity was initiated in reliance on the patent’s lapse.
Equitable rights give courts discretion to permit continued activity, potentially including expansion of use, based on fairness and the extent of investment or reliance made during the lapse. Courts weigh factors such as the nature of investments, duration of use, and knowledge of the original patent.
Courts may apply equitable doctrines, including estoppel and reliance-based protections, to shield third parties who acted in good faith during the lapse. Therefore, while § 41(c) permits reinstatement, it does not erase the legal significance of a period during which the patent was unenforceable. Businesses relying on such a lapse should consult with patent attorneys to assess whether they have a viable intervening rights defense if the patent is later reinstated.
The term of a patent also varies depending on the type of patent granted. Utility patents, which cover new and useful processes, machines, or compositions of matter, generally last 20 years from the earliest effective filing date under 35 U.S.C. § 154(a)(2).
In contrast, plant patents, which protect asexually reproduced plant varieties, also have a 20-year term, but unlike utility patents, no maintenance fees are required to keep them in force. Thus, there is no opportunity for lapsed plant patent.
Design patents, which protect the ornamental design of a functional item, have a different term entirely. For applications filed on or after May 13, 2015, the term is 15 years from the grant date under 35 U.S.C. § 173, and likewise require no maintenance fees. Understanding these differences is essential when evaluating a patent’s duration.
When a patent expires, it opens the door for use of the patented technology and further innovation, allowing others to use, build upon, and earn money from the original invention without needing to negotiate licensing agreements. However, it’s crucial to accurately determine the patent expiration date. Missteps can lead to costly litigation or lost opportunities.
By working with patent attorneys, you can analyze expired patents in your field, stay ahead of your competitors, and turn intellectual property rights once held by others into growth opportunities for your business.
To learn more or get help with evaluating expired patents, contact us for a consultation with an experienced patent attorney.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
When launching a new product, service, or business, you should create a brand around it and protect that brand. It is a worthwhile exercise to familiarize yourself with the different types of trademarks available under trademark law. Whether you're naming a new streaming service, labeling an actual product, or identifying your business name, selecting the right kind of trademark is key to securing brand protection and avoiding infringement.
This guide breaks down the main types of trademarks, using accessible language for entrepreneurs and small business owners unfamiliar with legal jargon. By the end, you’ll understand how to choose an appropriate mark for your brand, avoiding problematic marks such as generic terms. We also provide a brief discussion of the trademark registration process with the United States Patent and Trademark Office (USPTO).
A trademark is a word, phrase, symbol, or design, or any combination of those things that identifies and distinguishes the source of the goods from other sources of goods. In other words, a trademark distinguishes one provider of goods from another (e.g., Coach from Louis Vuitton). Think of a trademark as your brand’s signature. It helps customers recognize your company and its offerings.
Under U.S. trademark law, trademarks can be words, letters, logos, or even non-traditional marks like sounds, colors, or smells. They must be distinctive enough to differentiate your specific brand from others in the marketplace.
Service marks are essentially the same as trademarks, except that service marks are used in connection with services rather than goods. For example, the Federal Express company does not sell goods, it sells package delivery services in connection with the FedEx® mark. Thus, the FedEx® mark is a service mark.
Not all marks are created equal. The more distinctive a trademark is, the stronger the legal protection it provides. Trademark law recognizes a spectrum of distinctiveness that determines the strength of a mark and the level of protection it provides. The more distinctive a mark is, the more protection it receives. Let’s look at the five primary categories:
Fanciful trademarks are completely invented or coined terms with no prior meaning in any language. These are not real words until a business or organization creates and uses them as a mark. Because they have no preexisting definition or association with a type of product, service, or industry, fanciful marks are considered the strongest type of trademark under U.S. law. This category is also referred to as “coined marks” or “invented words.”
Fanciful trademarks are inherently distinctive, which means they are eligible for registration and legal protection without the need to prove acquired distinctiveness. Acquired distinctiveness is secondary meaning that is established in the mind of the consumer over time through advertising under the trademark and presence in the marketplace. The inherent distinctiveness of fanciful marks makes it much easier to enforce trademark rights against infringing third parties.
Well-known examples of fanciful trademarks include Kodak®, Xerox®, Exxon®, and Verizon®. None of these words existed before they were adopted by companies to identify their goods or services. Today, these names are strongly associated with a single source of goods or services, providing clear and powerful brand recognition.
Fanciful marks receive the highest level of protection. They are typically not vulnerable to claims of descriptiveness, nor are they likely to be confused with other existing marks, given their uniqueness. This makes them ideal candidates for federal registration and long-term legal protection.
Businesses that want to create a memorable and legally defensible brand should strongly consider a fanciful trademark. While such marks may initially require more effort and marketing to build consumer recognition, the long-term benefits in terms of exclusivity, trademark protection, and market clarity are substantial.
Arbitrary trademarks consist of real, commonly known words that are used in a way entirely unrelated to their ordinary meaning. Unlike fanciful trademarks—which are completely invented—arbitrary marks take existing dictionary words and apply them to goods or services with which they have no logical or descriptive connection. This disconnect between the mark’s usual definition and the product it represents makes the mark distinctive and highly protectable.
Arbitrary trademarks are also considered inherently distinctive, placing them near the top of the trademark protection hierarchy. They are eligible for federal registration with the United States Patent and Trademark Office (USPTO) and do not require a showing of acquired distinctiveness. This makes them highly valuable in terms of both legal enforceability and brand positioning.
The effectiveness of arbitrary marks lies in the unexpected pairing of a familiar word with an unrelated product or service. This counterintuitive use creates a memorable brand that avoids being descriptive or generic, both of which receive less protection under trademark law. The more unrelated the word is to the actual product or service, the stronger the trademark rights, and the more defensible the mark is against competitors.
Some of the most famous arbitrary trademarks include Apple® for computers and Amazon® for online retail. In both cases, the words have clear meanings in the English language. “Apple” is a fruit, and “Amazon” is a river and rainforest region. However, neither word describes or suggests anything about technology or e-commerce. The selection of these common terms for unrelated industries results in strong brand identifiers that are easily distinguishable from others in the marketplace.
Companies seeking a bold, recognizable, and enforceable identity without inventing a new word may benefit from choosing an arbitrary mark.
Suggestive marks are terms that indirectly hint at the characteristics, qualities, or purpose of a product or service, but do not directly describe them. These marks require consumers to use imagination, thought, or perception to connect the name to the underlying goods or services. Because they imply rather than describe, suggestive marks occupy a middle ground in the spectrum of distinctiveness recognized by trademark law.
Suggestive trademarks are considered inherently distinctive, which means they can be registered with the USPTO without needing to prove secondary meaning. While they are slightly weaker than fanciful or arbitrary marks in terms of distinctiveness, they are still strong from a trademark protection standpoint and enjoy full legal protection once registered.
The success of suggestive marks lies in their ability to convey a benefit, feeling, or association without using generic or descriptive terms. This subtlety allows a business to build a compelling brand identity that resonates with customers, while still qualifying for intellectual property protection. Suggestive marks also strike a balance between marketing effectiveness and legal strength, making them appealing to many small businesses.
Suggestive trademarks are often seen as more creative or clever than descriptive ones, allowing companies to hint at other characteristics or benefits of their offerings without limiting future brand expansion.
One classic example is Netflix®, which subtly suggests “internet” and “flicks” (movies), but doesn’t literally describe a streaming service. Another is Coppertone®, which evokes the sun-kissed, coppery glow of suntanned skin but doesn't directly state “suntan lotion.” These marks function well because they are both evocative and legally protectable, without straying into descriptive marks territory.
Descriptive trademarks are terms that directly describe a feature, quality, characteristic, function, or purpose of the underlying product or service. These are known as descriptive marks, and they convey information that a consumer might use to evaluate the product, such as what it is, what it does, or a key ingredient or benefit. Because of this clarity, they may seem appealing from a marketing standpoint, but from a legal perspective, they face serious limitations.
Descriptive marks receive low legal protection, especially at the outset. The USPTO often refuses registration of such marks unless the applicant can prove that the mark has acquired secondary meaning in the minds of customers.
To gain protection, the trademark owner must show that consumers associate the descriptive term with a specific brand or trademark holder, rather than with the product category generally. This can be demonstrated through long-standing use, significant advertising expenditures, customer surveys, or strong market presence. Once secondary meaning is established, the mark becomes eligible for trademark registration.
Many descriptive marks are initially rejected by the USPTO, and unless the applicant can present compelling evidence of secondary meaning, the application will be rejected.
Marks like American Airlines® for air travel services in the US or Quick Print® for printing services fall squarely into this category. They tell the consumer exactly what to expect: something cold and creamy (ice cream), or fast printing (printing services). However, because they describe the goods rather than serve as unique identifiers, they lack the inherent distinctiveness required for immediate trademark protection.
Avoid descriptive trademarks when possible, opt instead for suggestive, arbitrary, or fanciful marks for stronger and easier-to-enforce trademark rights.
Generic trademarks, more accurately referred to as generic terms or generic marks, are common words or phrases that name a general class or category of products or services. These terms are the everyday language that consumers use to refer to goods, such as “bread,” “bicycle,” or “computer.” Because they are not distinctive and simply describe what the product or service is, they cannot function as trademarks under U.S. law.
Generic marks have no legal protection. The USPTO will deny any application that uses generic terminology to describe the goods or services. Likewise, courts will not enforce a generic term, as doing so would unfairly restrict competitors from accurately describing their own offerings.
Examples of generic marks include using the word “Computer” for a line of computers or “Milk” for a brand of dairy products. These terms tell the consumer what the product is, but not who is providing it. As a result, they fail to identify a unique source of goods or services and are not capable of being registered or enforced as trademarks.
Perhaps the most significant danger with generic terms is the risk of genericide, when a once-protectable trademark becomes so widely used as the name for a product category that it loses its distinctiveness. Famous examples include “Aspirin,” “Escalator,” and “Cellophane.” These marks were once registered and enforced, but over time, customers began using them to refer to the general product, not the specific brand. As a result, they lost their trademark rights.
Avoid using generic terms as trademarks, even if they are easy to market. Instead, choose a name that is distinctive, creative, and uniquely identifies your goods or services, one that provides real legal protection and helps your business stand out.
Beyond the basic spectrum of distinctiveness, there are additional categories recognized by the USPTO that serve unique functions.
Certification marks are a unique category of trademark used to indicate that goods or services meet specific standards established by a certifying organization. These standards can relate to quality, safety, origin, manufacturing methods, labor practices, or other measurable attributes. Unlike traditional trademarks, a certification mark is not used by the owner to promote their own goods or services, but rather by others who meet certain standards. For example, UL® (Underwriters Laboratories) certifies that products meet safety standards. The certifying entity sets the rules and authorizes the use of the mark by qualifying parties. Certification marks serve as indicators of trustworthiness and compliance, helping customers identify products that have been independently verified against established benchmarks. Because of their role in consumer protection and market integrity, certification marks receive trademark protection under U.S. trademark law, provided the certifier remains neutral and maintains control over usage.
Collective marks are a specialized type of trademark used to identify members of a collective group or association, such as a professional organization, trade union, cooperative, or other collective group. The primary purpose of a collective mark is to indicate that the person or business using the mark belongs to a specific group that adheres to certain membership standards or ethical guidelines. A well-known example is REALTOR®, which is used exclusively by members of the National Association of Realtors. The mark itself is owned by the collective organization, not the individual members, and use is governed by strict rules set by the organization. When a member uses the mark, it signals affiliation with the group and often implies adherence to a shared code of conduct or qualifications. Collective marks are especially useful for industries where membership in a regulated or respected group adds value, trust, or credibility in the eyes of customers or the public.
Non-traditional trademarks include colors, sounds, scents, product shapes, motion graphics, and other distinctive elements that go beyond standard words or logos. These marks function the same way as traditional trademarks—they identify and distinguish the source of goods or services—but they do so through sensory or visual impressions that are unusual in the trademark landscape. Famous examples include the NBC three-tone chime, which is registered as a sound mark, and the Tiffany blue box, a registered color mark associated with luxury jewelry. While these marks can be powerful branding tools, they are notoriously difficult to register. Applicants must demonstrate that the non-traditional mark has acquired secondary meaning, meaning that consumers have come to associate the mark specifically with a single source or company. This usually requires extensive evidence, such as long-term use, widespread advertising, and consumer surveys. Without this proof, the U.S. Patent and Trademark Office will not grant registration.
Registering your trademark with the USPTO is a critical step in securing long-term legal protection for your brand. Federal trademark registration not only provides nationwide rights but also puts competitors and the public on notice of your exclusive claim to the mark in connection with your specified goods or services. While common law rights may arise from actual use, only registration with the USPTO grants the full bundle of benefits, including access to federal courts and the ability to block imports of infringing goods.
Working with an experienced trademark attorney is highly recommended. Legal counsel can help you select a protectable mark, anticipate challenges (especially with descriptive marks or where secondary meaning may be required), and avoid rejections based on likelihood of confusion or procedural errors.
Understanding the types of trademarks available is the first step in securing your brand’s identity and building lasting trademark rights. Whether you use a fanciful name like “Coca-Cola®,” a certification mark, or a collective mark, choosing wisely now can save you from legal headaches, and enhance your business’s legal strength, in the future. For example, instead of calling a streaming service “Online Movies,” which is likely generic, opt for a creative name like “Flixtor” or “Zentube”, invented words with no direct descriptive meaning, offering more protection under the law.
If you need assistance with trademark selection and registration or other trademark matters, please contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
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