Business owners often hire independent contractors (e.g., graphic designers, marketing firms, web designers, etc.) to assist with marketing and ad design, website design work, branding concepts, content writing, product photography, and many other projects and tasks that require creativity. Many businesses are not aware that they do not own the copyrights in the work provided by these independent contractors. The copyrights in such creative works only transfer to the business owner if there is a written contract that expressly includes a proper assignment clause. Without this, the business owner has only an implied license to use the work generated by the independent contractor ("IC"). The terms of this license are not defined and open to interpretation and dispute between the IC and the business. The business cannot transfer the copyrights (e.g., if the business or brand is sold) and may not be able to transfer the license. Business owners need to understand their intellectual property and manage it proactively. There are pitfalls for the unwary. The bottom line is that you as a business owner need to be the copyright owner of the work that you pay for.
A copyright assignment is an agreement that transfers ownership from the original creator to another party in exchange for some payment or other consideration (any bargained-for value provided by the receiving party), which grants the new owner rights to the work. This article will explain what a copyright assignment entails, its legal requirements, and how it differs from ‘work for hire’.
A copyright assignment is a legal agreement that transfers ownership rights from the original creator to another individual or entity. The assignment can transfer to the assignee all or some of the exclusive rights in the work to use, modify, and distribute the work. Copyrights are a bundle of rights granted to the creator of an original work. These rights include the ability to perform or display the work publicly, reproduce the work (e.g., by printing, copying digital files, scanning, etc.), distribute copies of the work (e.g., by posting the work on social media, selling printed copies, transferring digital files, etc.), create derivative works, and license or assign these rights to others. Each of these rights is distinct, meaning they can be transferred, licensed, or assigned individually or collectively. An assignment can be written to transfer one or more rights in this bundle to another party. The assignment can encompass all rights or just specific ones, depending on the agreement. The original creator relinquishes control of whatever rights are assigned and cannot exercise the assigned copyrights in the work without permission from the assignee. For example, an author of a novel might assign the right to publicly perform the work to a theater company while retaining the rights to reproduce and distribute copies of the book. The author has relinquished the public performance rights and can no longer pursue public performances of his work, but retains the right to sell the book.
Publishers and businesses must have control over the copyrights in works they commission because it enables them to transact business with respect to the work without limitations and it makes the work an asset in the business, rather than just something the company is allowed to use. Complete control over a work is ideal to allow the business to maximize its commercial potential. However, in certain situations like the example above, carve outs for the original author may make sense. Each situation is different and requires a skilled copyright attorney to avoid costly mistakes.
For a copyright assignment to be valid, it must be executed in writing. Notarization is advisable, but not required. The written agreement should clearly outline the transfer of ownership and the specific rights being assigned. The agreement should also detail the amount of consideration. A copyright assignment is not valid without "consideration", which is anything for which the author is willing to exchange the copyrights. In other words, there must be a bargained-for exchange. Where a business is engaging an IC, the assignment is part of the bargain upfront and the consideration is in the price paid for the work. However, if the business fails to include the assignment the original agreement, there must be separate consideration for the assignment - i.e., the business has to pay the IC again to get a valid transfer of the copyrights. This is a mistake businesses make very often.
In order to avoid these mistakes, businesses should take a proactive approach similar to that outlined below.
Assigning copyright requires several critical steps: drafting a comprehensive agreement with the IC upfront, obtaining signatures, registering the copyrights in the work with the US Copyright Office (USCO), and recording the assignment with the USCO. The copyrights should be registered to create a public record of the work. The assignment should also be recorded with the USCO to establish a public record of the assignee's rights. Clarity in the scope and terms of the rights being transferred helps prevent misunderstandings and disputes. These steps can be adopted as a structured process for a business to execute any time they are soliciting creative services from an IC. Such a process can ensure that both the creators and assignees understand the terms of the engagement and that the copyrights are being transferred, and that there is a legally sound transfer of the copyrights.
A copyright assignment agreement should be comprehensive and include essential clauses to facilitate the transfer. Improper handling of copyright assignments, like omitting critical clauses, can impact your ability to enforce the copyrights. Careful drafting and review of the agreement are crucial to protect both parties’ interests. Having a copyright lawyer draft such an agreement is advised to ensure it is properly structured and legally sound. The original author (IC) must sign the agreement for it to be legally binding.
Essential elements of a copyright assignment agreement include the grant of rights, term and termination conditions, payment and consideration terms, the scope of the assignment, and warranties. The scope of the assignment may vary depending on the agreement of the parties. Copyrights are not monolithic. There are a bundle of copyrights in a work. There are several aspects of copyrights and the agreement should be explicit about which rights are being transferred and which rights are being retained by the IC, if any. For example, a graphic designer may demand that they are granted a license to use a copy of their work for inclusion in their public portfolio and/or other advertising.
The terms of the assignment should be tailored to the specific transaction and failure to properly capture the parties' intent and the necessary language can result in a failed transfer or unintended limitations on the transfer of rights.
In order to publicly record copyrights in a particular work, the work must be registered with the USCO. To register a copyright, the applicant must complete an application, providing the title of the work, identifying the author(s), its creation date, and whether and when it was previously published, such as by sale, public performance or display of the work. A deposit of the work must also be submitted. Additionally, groups of related works, such as a group of photographs, can sometimes be registered together under specific rules. Copyright registration ensures legal protection if the work is displayed, copied, or performed by any person or group without authorization. Once registered, there is a public record of the copyrights in the work and the copyrights can be enforced against infringements by filing a complaint in federal court. Registration also establishes constructive notice of the work to the public, meaning that even if a copyright infringement occurs without actual knowledge of the copyrighted work, the infringer is still liable. Copyright notice can be used to provide actual notice of copyrights to potential infringers, but registration provides more complete copyright notice benefits.
Recording the copyright assignment with the Copyright Office establishes public notice and legal recognition of the transfer of the copyrights from the author(s) to the assignee. The Copyright Office does not provide specific forms for copyright transfers but accepts various documents related to copyright ownership and maintains records of submitted assignments. This step solidifies the legal validity of the assignment and a pubic record of the transfer to the assignee. The publicly recorded assignment is crucial for future reference and resolving potential disputes over ownership.
One common pitfall in engaging an IC for creative services is to assume that because you are paying the IC for the work, you own the copyrights. As explained above, this is incorrect. There must be a written assignment signed by the IC that expressly transfers the copyrights to you.
Another common mistake is the use of a copyright assignment form found online. Copyright assignments are unique to each situation. It is important that the assignment is appropriately tailored to the situation by an attorney. A inadequate copyright assignment can lead to legal disputes over ownership, costly litigation, and complicate future licensing deals.
Failing to keep adequate records of copyright transfers can be equally damaging. The copyright office database does not provide copies of the copyrighted work associated with registration or assignment records. Thus, a failure to keep copyright registration and assignment records associated with copyrighted work can lead to confusion about what copyrights you own and associated enforcement and licensing problems.
These potential consequences underscore the importance of following proper procedures and maintaining accurate records to protect one’s interests.
While both copyright assignment and work for hire involve the transfer of copyright ownership, they operate very differently. A copyright assignment can be made between any two parties, whereas a work for hire is only created either by an employee or by an IC under specific circumstances. For a work to qualify as work for hire, it must either be created by an employee as part of their normal responsibilities and job duties or fit into one of nine specific categories defined by law. These categories include commissioned works such as translations, instructional texts, and tests, among others. Additionally, the work must be specially ordered or commissioned, and there must be a written agreement stating that the work is a work for hire.
Many businesses operate under the assumption that creative work specifically commissioned for the business is a "work for hire". However, as a general rule, the creative work is not a work for hire, since the categories of works for hire are fairly narrow and there must be a written agreement specifically identifying the work as a work for hire. It is much more effective to include specific assignment language for each contract made for creative services.
In summary, a copyright assignment is essential in any situation where you are engaging an IC to create artistic, design, decorative, or other kinds of creative work. You must include assignment language in the initial contract, clearly define the scope of the assignment, maintain accurate copyright records, and ideally register the copyrights with the USCO. Proper management of copyright assignments allows creators to retain control over their work and businesses to fully exploit their commercial potential.
Your copyrights are important assets and should be protected. Our attorneys have decades of experience in the copyright field. Contact our office for a free consultation.
© 2024 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.
The Federal Circuit’s recent decision in LKQ Corporation v. GM Global Technology Operations LLC has significantly refashioned obviousness analysis in the context of design patents. By overruling the longstanding Rosen-Durling test, the court introduced a more flexible approach for evaluating design patent obviousness, aligning it more closely with the framework for utility patents. This article explores the background, implications, and practical considerations stemming from the Federal Circuit's decision.
Design patents, which protect certain ornamental features of manufactured articles, have long been subject to the Rosen-Durling test to determine obviousness. This test required a primary reference that was “basically the same” as the claimed design and any secondary references must be “so related” to the primary reference that their combination would result in the same overall visual appearance. While this rigid framework aimed to reduce hindsight bias, it often limited the flexibility needed to invalidate undeserving design patents.
Criticism of the Rosen-Durling test grew following the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., which emphasized a flexible approach to obviousness for utility patents. It was frequently argued that this flexibility should extend to design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Federal Circuit finally heeded these calls, finding the Rosen-Durling test “improperly rigid” and inconsistent with Supreme Court precedent.
The case involved a challenge to a GM design patent for a vehicle fender, with LKQ Corporation arguing that the patented design was obvious in light of prior art. The Patent Trial and Appeal Board (PTAB) upheld the patent, citing LKQ’s failure to identify a “Rosen reference” with design characteristics “basically the same” as the claimed design. On appeal, the Federal Circuit granted an en banc rehearing and ultimately overruled the Rosen-Durling framework.
In its en banc decision, the court adopted the Graham v. John Deere Co. factors to evaluate design patent obviousness:
This flexible approach considers the overall visual impression created by the prior art designs and the claimed design, emphasizing the perspective of an ordinary designer in the field. The court’s reliance on Graham aligns design patent obviousness with utility patent principles.
The Federal Circuit’s new framework redefines the test for design patent obviousness. It begins by identifying a primary reference—the most visually similar prior art design—without requiring it to be “basically the same” as the claimed design. Secondary references can be considered to determine whether there is a combination of prior art features of the secondary reference with the design of the primary reference that would result in the same overall appearance as the patented design.
The court emphasized the importance of the analogous art requirement, which ensures that prior art comes from the same field or is reasonably pertinent to the purpose and field of the claimed design. By eliminating the rigid “so related” requirement for secondary references, the court allows for a broader but fact-specific inquiry.
Secondary considerations, such as commercial success, industry praise, and copying, now also play a critical role as “indicia of obviousness or nonobviousness.” However, these factors must be supported by evidence demonstrating their relevance to the claimed design’s ornamental features.
The new standard shifts focus to the “ordinary designer,” emphasizing whether the claimed design’s overall visual impression would have been obvious to such a designer.
The analogous art test ensures that prior art is relevant, considering designs from the same field or those reasonably pertinent to the claimed design’s purpose.
By aligning the obviousness inquiry with the Graham factors, the Federal Circuit ensures a more nuanced and comprehensive evaluation, reducing the risk of improperly rigid outcomes.
The shift in the obviousness standard has significant implications for both design patent applicants and challengers:
Enhanced Examination Scrutiny: The new test may result in more rigorous examinations by the USPTO, potentially leading to an increase in rejections based on prior art.
Proactive Strategies: Applicants should include detailed disclosures and evidence of secondary considerations, such as commercial success and industry recognition, to strengthen their applications.
Broader Searches: Comprehensive prior art searches, including analogous designs from related fields will now be more critical to successful patenting.
Increased Opportunities: The flexible framework provides challengers with greater latitude to combine prior art references, improving the likelihood of invalidating weak design patents.
Evidence-Driven Arguments: Successful challenges will require robust evidence, including motivation to combine references and the overall visual appearance created by the combination.
Following the Federal Circuit’s decision, the USPTO issued updated examination instructions, emphasizing the application of the Graham factors and the importance of analogous art. The guidance encourages a focus on the claimed design’s overall visual impression rather than isolated ornamental features.
The USPTO has pledged to provide further examples and training to ensure consistency in applying the new standard. Patent practitioners and applicants should stay abreast of these developments and adapt their strategies accordingly.
The Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC represents a monumental shift in design patent law. By overruling the Rosen-Durling test and adopting a flexible framework based on the Graham factors, the court has aligned design patent obviousness with utility patent principles. While this new standard introduces some uncertainty, it promises a more equitable and rigorous evaluation of design patent claims.
Patent applicants and challengers alike must adapt to this evolving legal landscape. Consulting with experienced patent professionals is essential to navigating the complexities of the new obviousness standard and ensuring the robust protection of innovative designs. Contact our office for a free consultation.
© 2024 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 continuation patent application allows you to extend your original patent filing with additional claims, keeping the same filing date. This can be vital in adapting to new developments and protecting your innovation fully. This article will explain what a continuation patent application is, why it’s beneficial, the types available, the filing process, associated costs, and common mistakes to avoid.
A continuation patent application is an extension of a previously filed application that allows inventors to pursue additional claims related to the same invention. Essentially, it’s a way to continue the subject matter disclosed in a prior application without losing the original filing date. A continuation application is essentially a refiling of the original application with a different set of patent claims. It has the same priority date of the original patent application, meaning that it functions as though it was filed on the same day as the original application. However, it must be understood that no subject matter can be added to the original patent application, if you want the benefit of the original filing date.
Continuation applications must adhere to strict guidelines required by the United States Patent and Trademark Office (USPTO). They can only claim the subject matter disclosed in the prior application and must name at least one inventor from that application. This ensures that the continuation application is genuinely a continuation of the original invention rather than a new or partially new invention. The scope of claims in a continuation application can be broader or narrower than those of the parent application, but they cannot be identical. This flexibility allows inventors to refine their claims based on new information or strategic considerations, enhancing the overall protection of their invention.
So why pursue a continuation application? Filing a continuation patent application can be a strategic move that offers numerous benefits beyond the initial patent grant.
One of the primary reasons to file a continuation application is to secure broader claims that may not have been included in the original patent application. This allows inventors to expand the scope of their patent protection, ensuring comprehensive coverage of their innovation.
Also, patent examiners regularly restrict the number of claims in a patent application to a smaller number than what is filed in the application. This is referred to as a restriction requirement. A continuation application allows the applicant to pursue claim subject matter that the applicant was unable to pursue in the original application. The restricted subject matter may be pursued through a continuation application, or the more specific form of continuation referred to as a divisional patent application.
Another significant advantage of continuation applications is their ability to preserve the ability to pursue new claims in response to changing market conditions and technological advancements. As the market evolves, new information may arise that necessitates modifications to the original claims. By filing a continuation application, the patent owner can keep any prior issued patent and pursue different claims that cover different scope than the original . If no continuation application is filed, the parent patent application may issue as a patent, and the applicant will have no further opportunity to pursue patent claims for that invention.
Continuation applications can significantly enhance the licensing and valuation of a patent portfolio by allowing inventors to tailor claims to specific markets or potential licensees. Having a continuation application pending at the point of licensing or transferring the patent rights is potentially attractive to the licensee or assignee if they have or wish to develop variations or additions to the patented technology. With a continuation application, they may be able to tailor and pursue claims to the future advances. Through continuation filings, patent holders can craft claims that cover additional aspects of an invention, making the patent more attractive to a broader range of industries or applications. This flexibility enables licensees to negotiate agreements that align closely with their business models or technological needs.
Filing continuation applications can also help protect against competitor products that have designed around the original patent. For example, a competitor may attempt to analyze and design its products to avoid infringement of the initial issued patent. If the applicant files a continuation, the applicant can respond to such attempts to design around the parent patent by pursuing other claims on which the competitor's products read. Additionally, maintaining a pending application can create uncertainty for competitors about the scope of patent protection, further enhancing the applicant's competitive edge.
There is also the possibility that highly pertinent prior art may be discovered after the parent application becomes an issued patent. It is not uncommon that prior art that was not found by the applicant or the examiner prior to the payment of the issue fee in the parent patent application. The claims in the continuing application can be amended to distinguish the claims from the newly discovered prior art.
Moreover, continuation applications enable incremental claiming of allowable subject matter, making approval easier and providing a strategic tool against challenges to an existing patent at the USPTO. Leveraging continuation applications helps to build a robust and strategically valuable patent portfolio over time.
There are three main types of continuing patent applications: continuation, divisional, and continuation-in-part. Each serves a unique purpose and offers different advantages. Continuation applications claim only the subject matter disclosed in prior applications, allowing the pursuit of multiple patents without new material. This makes them ideal for refining and expanding the scope of an existing patent. Divisional applications, on the other hand, pursues claims that were restricted from the original application through a restriction requirement. Continuation-in-part applications include new material or subject matter not disclosed in the parent application. This type of application is beneficial when significant advancements or new aspects of the invention arise after the original filing. Using the appropriate type of continuation application, inventors can tailor their patent strategy to effectively protect their innovations.
Divisional applications can result in patent applications that involve complex inventions that may be claimed in multiple manners covering distinct aspects. Divisional applications claim independent subject restricted from the prior application, ensuring each distinct invention receives its own patent protection. Restriction is required where the patent examiner finds that the original application includes multiple inventions. The examiner will require that the applicant select one of the identified distinct inventions for examination in the original application. The restricted claims were submitted with the parent application but were found to be recite a distinct invention from the claim selected for examination in the original application.
Divisional applications allow the applicant to pursue those claims restricted from the original application to fully cover and protect the invention. The claims in the divisional application retains the priority date of the original application.
Continuation-in-part (CIP) applications offer a unique advantage by allowing inventors to include new material not disclosed in the parent application. This is in contrast to standard continuation applications, where new matter is not allowed. This can be valuable when new developments or improvements closely tied to the underlying invention arise after the initial filing. Incorporating these advancements allows a CIP to extend protection to the new aspects of the original invention.
To file a CIP application, it must claim the benefit of the prior-filed application. However, it’s important to note that the new material added in a CIP application does not inherit the earlier filing date of the parent application. Only the claims based solely on the parent application’s disclosure receive the original priority date.
A CIP application adds new disclosure of additions or changes to the original invention, and thus does not have the same specification as the parent patent application. A CIP can be useful in the case of an evolving technology. In order to establish priority for a CIP application to an earlier application, you must list the parent application in the application data sheet at the time of filing the CIP application. The CIP must also be filed during the pendency of the prior application. The CIP can be filed after the payment of the issue in the prior application, but must be filed prior to the issuance of the prior application.
In a CIP application, the effective filing date relates to the claims and whether they are supported by the parent's specification. If the CIP application contains claims that are fully supported by the written description of the parent patent application, those claims retain the effective filing date of the earlier application. However, claims that find their support at least partially in the new additional disclosure included in the CIP application, the filing date of the CIP application will be the effective filing date for such claims.
Unless you are filing a CIP application, the specification and drawings should be the same as those filed in the earlier parent application to avoid introducing new matter. The continuation application must also be filed during the pendency of the original application. The original and continuation applications must be co-pending when the continuation application is filed in order the continuity to be effective. Failure to maintain continuity means that the continuation application will not have the benefit of the original filing date. The continuation patent application filing must also reference the prior application that it seeks to continue in an application data sheet filed with the continuation application.
Filing continuation patent applications generally avoids the professional fees for drafting the full application. However, continuation applications still involve various costs, including filing fees, examination costs, and long-term expenses like maintenance fees. The examination costs, including attorney fees and responses to office actions, can add up over time. Long-term expenses, such as maintenance fees for multiple continuations, also need to be factored into your budget.
By understanding and planning for these costs, inventors can make informed decisions about their patent strategy while pursuing thorough patent protection.
Filing a continuation patent application incurs various fees, which are set to increase starting January 19, 2025. The basic filing fee for a continuation application will rise from $320 to $350. Additionally, the utility examination fee will increase from $800 to $880, reflecting an 8% hike. New fees for continuation applications are set to take effect, with costs of $2,700 in extra fees for filing a continuation more than 6 years after the application priority date and $4,000 for continuing applications filed more than nine years after the priority date. These fees are intended to reduce the timeframe in which continuation applications are pursued. They will change the strategy in pursuing continuation applications. However, continuation applications will remain valuable strategic tools in pursuing patent protection. The patent office is already overburdened, and this fee increase is designed to reduce the number of continuations filed. By understanding these upcoming changes, you may better plan your patent strategy and budget for the associated costs.
In conclusion, understanding and effectively utilizing continuation patent applications can significantly enhance an inventor’s patent strategy. These applications allow for the extension and expansion of patent protection, ensuring that innovations remain secure against competition over a longer period. By strategically filing continuation applications, inventors can refine and broaden their claims, adapt to changing market conditions, and protect against competitor products.
Ultimately, the benefits of continuation applications, including extended protection and strategic claim adjustments, make them a valuable tool for any inventor looking to maximize the value and protection of their intellectual property.
If you need assistance with a patent application, a continuation application, or other information pertaining to patents, contact our office for a free consultation. Our patent attorneys have decades of experience in handling patents.
© 2024 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.
Design patents protect the ornamental aspects of an article's appearance, ensuring that unique designs for products and other articles of manufacture receive legal protection against unauthorized replication. However, design patent infringement is a bit esoteric and an often contentious area of intellectual property law. This article explores the legal standards for determining infringement and hypothetical scenarios illustrating varying outcomes in infringement cases.
A design patent safeguards the ornamental design of a functional item. Unlike utility patents, which protect how an invention works, design patents focus solely on aesthetic aspects, as illustrated in the patent drawings. Importantly, only the non-functional, ornamental features are protected, leaving functional aspects outside the scope of design patent protection.
The scope of protection is defined by the visual characteristics of the patented design as depicted in its drawings. These drawings represent the claimed design and form the basis for evaluating design patent infringement.
In design patent cases, courts must separate ornamental features from functional ones. Elements dictated solely by functionality do not qualify for design patent protection. For instance, in the Egyptian Goddess, Inc. v. Swisa, Inc. (2008) case, the Federal Circuit Court of Appeals clarified that functional aspects should be excluded from the infringement analysis, focusing instead on the overall visual impression.
Design patent rights can only be acquired by filing a design patent application with the United States Patent and Trademark Office (USPTO). The USPTO examines the design to determine whether it is novel, non-obvious, and meets all formal requirements. The patent office must evaluate whether the design is original (novel) and whether one of ordinary skill in the relevant art would find the applied-for design obvious in view of the relevant prior art. Design patent obviousness may be found based on one or more prior art references, e.g., a combination of a primary reference that is similar to the applied-for design and a secondary reference that fills in deficiencies of the primary reference. The references must be the same type of article or product. For example, if the claimed design is for an article of clothing, the prior art must be clothing or something very similar. This is referred to as the analogous art requirement. If there is no analogous prior art that discloses the design or is so similar that it renders the design obvious, the USPTO will issue the design patent. Once the USPTO issues the design patent, it can be enforced against infringing parties.
The standard for determining design patent infringement was clarified by the Federal Circuit in the Egyptian Goddess case. The court adopted the ordinary observer test as the sole standard, moving away from the "point of novelty" test. Under the ordinary observer standard, infringement occurs if, in the eyes of an ordinary observer, the claimed and accused designs are substantially similar, causing the observer to mistake one for the other. The accused design infringes the design patent if it embodies the patented design or is a colorable imitation thereof. However, relevant prior art references must be considered in making the infringement determination.
The design patent infringement test applied by federal courts involves a two-step analysis:
1. First Prong - Plainly Dissimilar Comparison: Determine whether the accused product is "plainly dissimilar" from the patented design. If so, the analysis ends. This approach is quite different from utility patent infringement analysis, in which infringement is found only if each and every claimed element is present in the infringing article either literally or by equivalent. Design patent infringement is more based on perception by an ordinary observer, which is somewhat similar to trademark infringement analysis where consumer confusion between trademarks must be shown.
2. Second Prong - Comparison with Prior Art: If the accused product is not plainly dissimilar from the patented design, compare both the claimed and accused designs against the prior art to assess whether the unique aspects of the patented design are present in the accused design. The determination the portions of the design that are found in the prior art is usually performed by the district court in a claim construction hearing, or a Markman hearing.
Apple filed a high profile design patent infringement lawsuit against Samsung on April 15, 2011, in the United States District Court for the Northern District of California. Apple accused Samsung of infringing its design and utility patents, focusing on Samsung’s smartphones and tablets, including products in the Galaxy series. Apple alleged that Samsung's devices copied key features of the iPhone and iPad, including their distinctive designs and user interfaces. Central to the case were Apple’s claims that Samsung’s products unlawfully mimicked the sleek, minimalist design of its devices, particularly focusing on patented design elements like those in the D618,677 patent. Below is an example comparison of the design patent to the Samsung products. This is the kind of design patent infringement analysis that is carried out in such a case.
A company designs a smartphone case that has a conventional, plain case design that simply follows the outline of an iPhone. The only unique element of the case is the company's decorative logo on the back surface. Another company releases a case with the same conventional, plain design with a different logo. The designs only overlap with respect to common, plain general design. The designs do not overlap with respect to the unique design of the company logo. Conventional elements cannot be a basis for infringement, and thus there is no infringement.
A patented chair design features a unique combination of curved and straight lines, creating a distinctive aesthetic. The patented design also includes decorative features in the cushions of the chair. A competitor’s chair replicates the curved and straight line elements of the design, but does not include the decorative elements on the cushions of the patented design.
Under the ordinary observer standard, the fact finder (a jury) might find the designs substantially similar, particularly if the omitted features are not prominent. Prior art designs would play a critical role in the district court's assessment.
A patented shoe design displays a specific pattern on the sole, providing a recognizable look that is not found in the prior art. A competitor sells shoes with an identical sole design, but different upper portion of the shoe. Here, the patented design specifically covers the pattern on the sole and is not limited to any design elements on the upper portion of the shoe. The competitor's design is not plainly dissimilar and the patented design is wholly original. The competitor’s shoe would likely be deemed a colorable imitation, constituting design patent infringement.
Design patent owners face challenges in proving infringement due to the subjective nature of the ordinary observer test. Courts often rely on side-by-side comparisons of the claimed and accused designs, as well as input from expert witnesses and consumer surveys. Moreover, considerations of functional aspects of the design and claim construction in view of related prior art designs can complicate the analysis.
Your business can take proactive steps to avoid design patent infringement. Before launching a new product, a Freedom to Operate (FTO) search may be conducted to determine whether there are enforceable patents that pose an infringement risk. This search may coincide with a patentability search to determine whether the new design is potentially patentable. If there are enforceable design and/or utility patents that pose a potential infringement risk, you may modify your designs to ensure they are plainly dissimilar from the patented designs.
You should also focus on designs with unique visual impressions that the typical consumer can easily distinguish from existing designs. The closer your designs are to what has created by third parties and competitors, the more likely you will face an infringement issue.
You should also seek legal advice during product development to help you navigate potential infringement issues and minimize risks. By prioritizing these steps, businesses can safeguard their products, respect intellectual property rights, and avoid costly disputes.
Accounting for potential design patent infringement requires the skill and knowledge of an experienced patent practitioner. The attorneys at Sierra IP Law have decades of experience in the field of patents and can assist you with patent procurement, patent infringement analysis and disputes, and any other intellectual property issues. Contact us for a free consultation.
© 2024 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.
Trademark law provides rights and protections for trademark owners as a result of continuous use of their marks in commerce. This means that a business must actively use the trademark to keep the rights alive and enforceable. As a general matter, when a trademark is no longer actively used by its owner, its protection under the common law and the Lanham Act ends. This cessation of use and rights is referred to as trademark abandonment. However, in some cases a trademark owner may retain residual goodwill in an abandoned trademark. Residual goodwill refers to the lasting association and recognition that a trademark retains in the minds of consumers even after the trademark has been abandoned or its use has ceased. This form of goodwill persists because consumers continue to associate the trademark with the original source, company, or product, despite its absence from the marketplace.
Under Section 45 of the Lanham Act, a trademark is considered abandoned if its use ceases with no intent to resume such use. The Lanham Act provides that nonuse for three consecutive years constitutes prima facie evidence of abandonment. However, the concept of residual goodwill complicates this seemingly straightforward treatment. Even after a mark is abandoned, it may retain a marketplace presence, eliciting recognition from consumers and maintaining a measure of its original goodwill.
Residual goodwill embodies the public’s continued association of a mark with its original owner, even after the owner has ceased production or sales. As such, it represents the lasting value of the mark in the minds of consumers, despite its absence from the ordinary course of trade.
Residual goodwill is not merely a concept, but has tangible consequences in trademark disputes. Courts and the Trademark Trial and Appeal Board (TTAB) have frequently grappled with its role in rebutting the presumption of abandonment. For example, in Ferrari S.p.A. Esercizio Fabbriche Automobili e Corse v. McBurnie, 11 U.S.P.Q.2d (BNA) 1843, 1851–52 (S.D. Cal. 1989)., the court recognized residual goodwill in the trade dress of Ferrari’s iconic car designs, noting their continued recognition in the marketplace long after active production had ceased.
This legal doctrine serves two purposes:
Protecting Consumer Interests: The lingering association of an abandoned mark with its original source can lead to consumer confusion if a new party adopts the mark without disclaimers or quality control. Courts have often emphasized the importance of minimizing such confusion in alignment with the Lanham Act's objectives.
Safeguarding the Original Owner’s Reputation: If a new user capitalizes on the goodwill of an abandoned mark by attaching it to inferior products, it can tarnish the reputation of the original trademark owner, especially if the owner remains in business.
Residual goodwill significantly impacts the trademark registration process by complicating determinations of abandonment and priority. When a trademark is presumed abandoned due to nonuse, residual goodwill may rebut this presumption, allowing the original owner to retain rights despite the cessation of active use. This poses challenges for new applicants attempting to register a mark that appears unused but retains consumer recognition. The Trademark Office and courts often assess residual goodwill by examining consumer perception, de minimis use, and how the brand is maintained in the public eye. For example, in the Ferrari case the court emphasized that the car designs were still on the road in the public eye and the Ferrari company was still providing parts for the vehicles.
For new applicants, the existence of residual goodwill can create legal hurdles, as they must demonstrate that the mark has lost its source significance. Conversely, owners of marks with residual goodwill must provide evidence of ongoing recognition or intent to resume use to safeguard their rights. The interplay between residual goodwill and registration ensures that consumer interests and marketplace integrity are preserved, but it also introduces complexity to the process.
Demonstrating the existence of trademark residual goodwill requires substantial proof, often involving evidence of consumer recognition, ongoing secondary markets, or continued advertising by the original owner. For instance, de minimis use—such as limited sales or production of related items—can support a finding of residual goodwill. In Peter Luger Inc. v. Silver Star Meats Inc. 63 U.S.P.Q.2d 1555, 1563 (W.D.Pa. 2002), a court concluded that residual goodwill persisted when the infringer’s unadvertised launch of a product led to significant sales increases, indicating sustained consumer recognition.
However, residual goodwill generally diminishes over time. In Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., the TTAB held that 15 years of nonuse effectively extinguished any remaining goodwill, underscoring the limits of this doctrine. Conversely, strong consumer recognition can sustain residual goodwill for decades, as in the Skippy peanut butter case, where residual goodwill rebutted abandonment after 23 years of nonuse. Skippy Inc. v. CPC International Inc., 674 F.2d 209, 216 (4th Cir. 1982).
Critics of the residual goodwill doctrine argue that its subjective nature complicates its application. Courts must weigh a several factors, including the strength of consumer recognition, elapsed time, and the intent of the new adopter. This lack of standardization can lead to over reliance on inconsistent judicial reasoning.
Moreover, some assert that recognizing residual goodwill may hinder market competition by making it more difficult for companies to adopt marks deemed abandoned. By reducing the availability of marks for new entrants, this doctrine may inadvertently discourage commerce.
Trademark owners and potential adopters can both take proactive steps to navigate issues surrounding residual goodwill:
For Owners:
For New Adopters:
Residual goodwill remains an important consideration in the broader framework of trademark law. Courts will continue to wrestle with the balance between encouraging commerce and new business to establish brands and the enduring value of residual goodwill. The concept of residual goodwill will continue to shape the interplay between abandoned trademarks and the establishment and growth of new businesses.
If you are an entrepreneur and you have built or plan to build a business, it is in your interest to consult with a trademark attorney that understands the complexities of trademark law, including residual goodwill. Vetting your business name and branding at an early stage may make the difference between building a strong brand or facing a trademark infringement lawsuit.
Contact Sierra IP Law, PC for assistance with complicated trademark matters or issues in other areas of intellectual property law. Our attorneys have decades of experience in all areas of intellectual property. We handle trademark registration, trademark licensing, trademark disputes and litigation, and cancellation and opposition proceedings before the Trademark Trial and Appeal Board. Call us to schedule a free consultation.
© 2024 Sierra IP Law. The information provided herein is not intended to be 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.
In order to understand how trademark rights are acquired, you must first understand what a trademark is. Trademark rights came into existence to protect both businesses and consumers by fostering trust and clarity in the marketplace. These rights serve a dual purpose: ensuring that consumers can identify the source of goods or services, and protecting businesses from unfair competition resulting from the misuse of their branding.
A trademark is a source identifier that distinguishes a product, brand, or business name from others in the marketplace. The primary function of trademarks is to help consumers identify the origin of products and prevent confusion with similar marks. Trademark law protects (1) the trademark owner by providing the exclusive right to use a specific trademark in connection with their goods or services and (2) the consumer by enabling them to rely on a particular source of goods or services.
Trademark law grants legal protection to registered trademarks, but unregistered marks can still gain common law trademark rights through use of the mark in connection with goods or services ("actual use in commerce"). However, common law protection is limited compared to federal registration, which carries nationwide rights, a presumption of trademark rights, and a public record of the owner's trademark rights. We explore these distinctions in greater detail below.
Trademark rights are unique because they are created from the relationship of the trademark owner and the consumer. Unlike copyrights or patents, they are not the result of creative expression or innovation. A particular trademark can contain significant artistic expression, such as the famous Ferrari logo, the MGM logo, the Columbia Pictures logo, and the Starbucks logo. However, such artistry is not required to establish trademark rights. A trademark can be essentially devoid of creativity. To illustrate, consider the GAP name and logo, General Motors' name and logo, and American Airlines.
Another distinction between trademarks and other intellectual property is that term of trademark rights is based on continued use. Unlike patents or copyrights, which have a fixed term, trademarks can last indefinitely, provided they remain in use and maintain distinctiveness from other brands. If a trademark owner stops using the mark in connection with the sale of its goods or services, the rights can be lost due to abandonment. Because trademarks are source identifiers for goods and services, when the source of the goods and services is no longer using the mark, the mark no longer serves its lawful purpose and the trademark rights cease.
Trademarks can include unique combinations of letters, sounds, symbols, or designs, often representing a brand's identity. When used for services, they are called service marks. Trademarks are a key element of intellectual property and differ from other intellectual property rights, such as patents or copyrights, because they protect branding rather than inventions or creative works.
Trademark rights can be acquired through three main methods: common law use, state registration, and federal trademark registration, each providing varying levels of trademark protection. Common law rights arise automatically when a trademark name or service mark is used in connection with goods or services in commerce. These rights depend on active and continuous use and are geographically limited to the area of consumer recognition, though an online presence can expand this reach. State trademark registration provides localized protection within the state, offering exclusive rights within its borders. Finally, federal registration through the USPTO grants nationwide protection and enhanced protection under trademark law, with the federally registered mark benefiting from the legal presumption of validity. The specific process and requirements for each method vary, but all emphasize the importance of proper use, registration formalities, and alignment with the intended scope of the business.
Trademark rights can be established under common law without formal registration by using a mark in connection with goods or services in commerce. This process explains how to get trademark rights based on actual use rather than registration. A business entity or individual acquires exclusive rights to a trademark name or service mark when the mark is used publicly to identify the source of goods or services. The provision and sale of goods or services in commerce under a trademark or service mark generates trademark rights as long as it is a proper form of trademark and it is not confusingly similar to an existing third-party trademark. If the mark is generic (e.g., you are calling your barber shop "The Barber Shop) or if you are using a confusingly similar mark to an existing mark (e.g., you are trying to sell fresh fruit under the name "Sunkissed", which is almost identical to the famous Sunkist brand ), you will not establish trademark rights. Otherwise, the simple use of a trademark in commerce will result in the establishment of trademark rights, which will grow in strength with sustained use.
The geographic scope of a common law trademark is determined by the area where the mark is actively used and recognized by consumers. Historically, this was limited to the locations where a business had a physical presence. However, the internet has significantly expanded the geographic reach of a business name or service marks, enabling businesses to claim broader geographic trademark rights if their online presence creates recognition outside their immediate location. For example, the furniture and décor company Wayfair is exclusively on the internet, but has national reach with its products. Even if Wayfair never pursued a trademark registration, it would have nationwide common law trademark rights. Conversely, the geographic scope of the trademark rights of a local salon reach only as far as the local area in which consumers recognize its business name.
Common law trademarks can be enforced under both the Lanham Act and corresponding state laws, offering claims and remedies for trademark infringement even without federal registration. The Lanham Act provides a federal cause of action for the unauthorized use of a similar mark in a way that is likely to cause confusion, deception, or mistake in connection with goods or services. Remedies under the Lanham Act include injunctive relief, monetary damages, and, in some cases, recovery of the infringer's profits.
At the state level, common law claims, such as unfair competition or passing off, can also be pursued to stop the misuse of a mark. State laws vary but generally allow for remedies like injunctions and damages for harm caused by the unauthorized use of a trademark name or service mark.
Although common law trademarks lack the presumption of validity provided to registered marks, trademark attorneys can help trademark owners establish their rights by presenting evidence of active and continuous use in commerce. This may include showing consumer recognition in the relevant market or proving that the mark has acquired distinctiveness. These legal pathways enable private companies and individuals to protect their intellectual property rights and secure relief from unauthorized use.
State trademark registration offers localized trademark protection and differs across states in terms of scope and rights. The state trademark registration process involves filing a trademark application with the relevant state agency, such as the California Secretary of State, and paying the required trademark registration fees. In California, registering a trademark grants the registered mark exclusive use within the state, providing legal grounds to prevent unauthorized use of the mark in connection with goods or services in California.
The application process is typically less complex and costly than federal registration, but the geographic scope of rights is limited to the state’s borders. In California, trademark law allows enforcement through state courts, providing remedies like injunctive relief and damages for infringement.
State registration is useful for businesses operating locally or regionally and that do not engage in interstate commerce. A trademark attorney can assist in navigating the trademark registration process to register a trademark and secure robust state-level protection.
To establish trademark rights through a trademark application at the federal level, you must file with the United States Patent and Trademark Office (USPTO), the federal agency that registers trademarks. Federal trademark registration provides enhanced protection, including the exclusive right to use a registered mark in connection with the goods or services listed in the application throughout the U.S.
The trademark application process requires that the Applicant choose a filing basis, which can be:
Intent-to-Use (for marks not yet in use but with a bona fide intent to use in interstate commerce)
Use-in-Commerce (for marks already in use in interstate commerce).
For an intent-to-use application, applicants must have a bona fide intent to use the applied-for mark in interstate commerce. This means that the applicant has real and present plans to use the mark in commerce. An applicant cannot reserve marks for later use by filing an ITU application without a good faith intent to begin use of the mark. For example, if you come up with a clever name that you like for a clothing line, you need more concrete intent to use the mark than just a general desire to start a clothing brand under the imagined brand name. The intent to use the mark must be tied to a real plan of action.
A present-use application requires evidence of actual use during the initial filing. A present-use application requires proof that the mark is already in use in interstate commerce, meaning the goods or services are offered across state lines or at least impact trade between states. Applicants must include a declaration of use, affirming active use of the mark, and provide a specimen of use (e.g., product labels, website screenshots showing sales, or other evidence that the mark is being used in interstate commerce). The trademark application must also specify the date of first use in commerce and first use anywhere, demonstrating the mark's active and continuous use. Additional requirements include identifying the mark, its class of goods or services, and paying the required filing fees.
The trademarking process begins with filing an initial application that includes a clear depiction of the mark (e.g., a standard character mark), a description of the goods or services, and the filing fee and any additional trademark registration fees. A key part of the initial application is designating the appropriate trademark classes. The USPTO organizes goods and services into 45 broad categories: 34 for products and 11 for services. For example, Class 25 covers clothing items like T-shirts and jackets, while Class 35 includes business services such as marketing and advertising. Each class designated in the application is treated as a separate application with its own separate application fee. Applicants must specify the class or classes relevant to their proposed mark.
The initial application must be filed electronically through the Trademark Electronic Application System (TEAS), an efficient platform offered by the USPTO. Applicants can choose between the TEAS Plus and TEAS Regular forms. The TEAS Plus option has lower required fees (currently $250 per class of goods or services) but requires strict adherence to specific descriptions of goods and services in a pre-approved list provided in the USPTO's Trademark ID Manual. The TEAS Regular form, while more flexible in allowing custom descriptions, has higher required fees (currently $350 per class).
The United States Patent and Trademark Office (USPTO) is responsible for processing trademark applications and maintaining the federal trademark registry. The USPTO provides resources and tools to help applicants navigate the trademark registration process. After submitting a pending trademark application to the trademark office, the examination process begins. An examining attorney, assigned by the USPTO, conducts a comprehensive trademark search in the USPTO database to identify potential conflicts with existing registered trademarks or pending applications. If the examining attorney raises concerns, such as similarity to an existing mark or issues with the stated filing basis, the applicant receives an office action detailing objections.
Applicants must respond to an office action within six months to maintain their application. If the examining attorney approves the application, the mark is published in the Official Gazette, allowing the public to challenge its registration on legal grounds within a 30-day window. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark office issues a registration certificate, granting the mark the status of a registered mark on the federal trademark registry with enhanced protection under federal trademark law.
For intent-to-use applications, the process includes additional steps. Before the application can advance to a federal registration, the applicant must file a statement of use proving the mark’s use in commerce within six months of the notice of allowance of the pending application. If more time is needed, applicants may submit extension requests, allowing up to five additional six-month periods to meet this requirement.
Successful federal trademark registration provides the legal presumption of ownership and exclusive rights to the mark for specific goods or services, as listed in the official record. The process ensures the trademarking process maintains fairness and clarity in the market, while providing the registered mark enhanced protection and the ability to enforce rights in federal court.
The entire process typically takes between 12 and 18 months to complete, depending on factors such as application completeness and formalities, and whether the trademark examiner raised any issues. After submission, the trademark office reviews the application within 6 to 9 months. If no office action or opposition arises, registration proceeds smoothly. However, the timeline may extend due to examining attorney reviews or public opposition during publication in the Official Gazette. For faster processing, the USPTO offers expedited options under special petitions for urgent cases, which require additional filing fees and specific justifications, such as an existing trademark infringement issue.
A U.S. trademark registration or pending trademark application can serve as a priority application for foreign registration under the Madrid Protocol or foreign national trademark systems. By filing a foreign trademark application within six months of the U.S. filing date, applicants can claim the U.S. filing date as their priority date in other jurisdictions. This priority claim provides an advantage by securing earlier rights in foreign markets, offering protection against later-filed conflicting marks. The Madrid Protocol simplifies international filings by allowing a single application to cover multiple countries, reducing costs and administrative burdens while ensuring a streamlined trademark registration process globally.
Conducting a trademark search is a critical first step in the trademarking process to ensure your proposed mark does not conflict with existing registered trademarks or other protected marks. The USPTO’s Trademark Electronic Search System (TESS) allows you to search the trademark registry for direct matches with all or part of your proposed mark. This helps identify potential conflicts within the USPTO database, ensuring your application meets trademark law requirements.
Beyond a TESS search, state trademark and business registries, domain name databases, social media handles, and the internet should also be searched to determine whether there are existing state registrations and common law rights in the same or similar marks. State trademark registrations and unregistered marks might present potential trademark infringement risks. By performing a comprehensive search, you minimize the risk of application rejection or legal disputes, saving time and resources in the trademark registration process. Seeking the assistance of an experienced trademark attorney can ensure the accuracy and proper scope of the search.
Trademark symbols indicate the status and type of trademark rights associated with a mark:
™ Symbol: The ™ symbol signifies that the mark is being claimed as a trademark, typically for goods, even if it is not registered. It provides notice of the claim but does not confer any specific legal protection beyond common law rights.
SM Symbol: The SM symbol is used for service marks, which identify the source of services rather than goods. Like ™, it indicates a claim of rights but does not require federal registration.
® Symbol: The ® symbol denotes a mark that is federally registered with the USPTO. Its use is legally reserved for registered trademarks and provides enhanced protection, including a legal presumption of ownership and validity. Improper use of the ® symbol for unregistered marks can lead to legal penalties.
The use of the ® symbol provides constructive notice to the public of the trademark owner's rights. Constructive notice means that anyone who uses or attempts to register a mark identical or confusingly similar to the registered mark is deemed to be aware of the existing registration, even if they did not actually know about it. This legal doctrine prevents a defense of ignorance in cases of trademark infringement.
The significance of constructive notice lies in its role in strengthening trademark protection. It creates a legal presumption of the mark's validity, ownership, and exclusive use for the specified goods or services nationwide, regardless of the actual geographic scope of use. This presumption allows the trademark owner to enforce their rights in federal court more effectively, deterring potential infringers and simplifying the litigation process.
Proper use of the ® symbol is crucial to maintaining these benefits. Failure to use the symbol, while not invalidating the registration, may weaken claims of infringement, as it could limit the remedies available for damages arising from unintentional infringement. Consequently, displaying the ® symbol serves as a powerful tool in protecting and asserting the value of a registered trademark.
Private companies and individuals alike benefit from establishing trademark rights to distinguish their brand and acquire the legal right to protect it. A properly protected trademark strengthens a brand's market position while deterring unauthorized use of its identifying marks. Trademark rights can be established through use of the mark in commerce through common law rights. However, trademark registration provides enhanced trademark protection and rights on a nationwide basis.
Contact our firm for a free consultation regarding the trademark process.
© 2024 Sierra IP Law. The information provided herein is not intended to be 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 becomes abandoned if its use has been discontinued with intent not to resume such use, according to 15 USC § 1127. Abandonment can have devastating effects on the trademark owner. A trademark owner’s failure to use a mark can result in loss of trademark rights. This article delves into what trademark abandonment entails, how it can occur, the legal effects associated with abandonment, and what it ultimately means for the trademark owner.
Trademarks, unlike patents, require continuous use to retain their legal protection. Failure to demonstrate continued use, along with evidence suggesting no intent to resume, can lead to abandonment. Under Section 45 of the Lanham Act, trademark abandonment is defined as the discontinuation of a trademark’s use with no intent to resume. Specifically, “a mark shall be deemed to be abandoned if its use has been discontinued with intent not to resume such use.” Intent not to resume use may be inferred from the circumstances.
Trademark abandonment can be classified into two main forms:
The abandonment of a trademark differs from the abandonment of a trademark application or registration in both definition and consequences.
Abandonment of a trademark signifies the loss of substantive rights, whereas application/registration abandonment affects procedural status but not necessarily ownership or use rights.
Abandonment of a trademark application may result from failure to file an office action response during examination of the application. When an examining attorney issues an office action in your pending trademark application, you are required to file a complete response addressing each issue raised in the office action by the specified due date, which is three months, extendable to six months.
A trademark application may also be abandoned if you fail to submit a Statement of Use in an intent-to-use application within the required time period. These procedural failures result in the issuance of a notice of abandonment, which provides two months to respond to the notice and revive the application. If no response is filed, the application is permanently abandoned.
A registration may be abandoned where the registrant fails to submit maintenance and renewal filings that are periodically required to maintain the registration. Between the 5th and 6th years after the registration date, a Section 8 Declaration of Continued Use or Excusable Nonuse must be submitted to confirm that the mark is still in use in commerce or that nonuse is excusable and maintain the trademark registration. Also, every 10 years after registration, you must file Section 8 and 9 Renewals, which confirm ongoing use (Section 8) and renew the registration (Section 9), which will otherwise expire. Failure to file these renewals results in cancellation of the registration.
These procedural abandonments result in a loss of the numerous benefits provided by a federal trademark registration. However, the loss of a trademark registration or application does not negate any common law rights the applicant may have acquired through actual use of the mark, but it does mean that a fresh application may be necessary to acquire a federal registration.
A trademark application or registration may be challenged before the Trademark Trial and Appeal Board (TTAB) through an abandonment claim or nonuse claim. Under the Trademark Act, an abandonment claim requires proof of two elements: nonuse of the trademark and an intention not to resume use. Nonuse for three consecutive years creates a presumption of abandonment, shifting the burden to the trademark owner to rebut the claim by showing evidence of use or an intent to resume use.
To prove abandonment, the challenging party must provide evidence of nonuse and circumstances suggesting the owner’s intent not to resume use. Similarly, a nonuse claim may target an application or registration when the mark was not in use at the time of filing or for specific goods or services. By presenting sufficient proof, the petitioner or opposer can invalidate the application or registration.
In recent years, the USPTO has initiated pilot programs to accelerate cancellation actions based on grounds of abandonment or nonuse through the Trademark Modernization Act. This expedited process, specifically designed to uphold the integrity of the U.S. Trademark Register, is limited to cases where clear evidence of abandonment exists, and counterclaims are absent. In TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, the TTAB illustrated how streamlined proceedings can facilitate the efficient removal of unused or abandoned marks from the register, clearing the path for new applications and trademarks in active use.
Federally registered trademarks are presumed valid under the law, placing the initial burden of proving abandonment on the party asserting the claim. According to Section 45 of the Lanham Act, a trademark is deemed abandoned when its use has ceased with no intent to resume. This intent may be inferred from the circumstances. Additionally, if a trademark has not been used for three consecutive years, there is a prima facie case of abandonment and the mark is considered abandoned, unless the trademark owner can demonstrate continued use or intent to resume use.
The abandonment of a trademark can lead to several significant consequences:
An applicant may petition to revive an abandoned trademark application if certain conditions are met. Upon receiving a Notice of Abandonment from the USPTO, the owner has two months to respond. If the owner did not receive the notice, they may file a petition to revive the application within six months. The petition must include a statement and supporting evidence explaining the reasons for abandoning the application. Failure to file the petition within the allowed timeframe will require the owner to start the registration process anew by filing a new application, potentially delaying their trademark protection. Prompt action is essential to preserve rights.
The trademark attorneys at Sierra IP Law have decades of experience handling trademark applications, trademark disputes, and all other types of trademark matters for their clients. We have the expertise and skill to assist you or your company with its critical trademark needs. Contact us for a free consultation.
© 2024 Sierra IP Law. The information provided herein is not intended to be 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.
At Sierra IP Law, our patent attorneys have decades of experience working with clients. In our extensive interactions with clients, we have seen all manner of clients and fielded all kinds of questions about patents and the patent prosecution. The decision about whether to move forward with the patent process can be difficult, particularly if you are not sure about the benefits, costs, and process of obtaining and enforcing a patent. Patents are generally unfamiliar to most businesses and entrepreneurs. To aid potential patent applicants, we have prepared this primer on the patent process to enable you to have a basic understanding of the patent process and to provide you with relevant questions to ask your patent attorney.
Let's begin with an overview of the patent process. The overall patenting process involves several key steps: patentability analysis, preparing and filing the patent application, interacting with the United States Patent and Trademark Office (USPTO) during the examination phase, and, if successful, receiving a notice of allowance. The process begins with an initial consultation with a patent attorney.
The process begins with a detailed consultation to discuss your invention. In this first meeting, you will clarify the technical details of the invention, discuss potential commercial applications, and whether the invention falls within the categories of patentable subject matter. You may be nervous about disclosing your invention to a patent lawyer. This is a valid instinct. You should not disclose your invention to just anyone. However, it should be understood that licensed patent attorneys are ethically and legally obligated to maintain the secrecy of their clients' information and to act in the best interest of the client.
An attorney cannot disclose a client's invention without client authorization. So you don't need a non-disclosure agreement with your patent attorney. You should look up your attorney on the state bar website to see how long they have been licensed and whether they have any history of discipline or suspension. You should also review their profile to determine what kind of services they offer and ask them questions about their experience in the field.
There are multiple kinds of patents and patent-like protection: design patents, utility patents, plant patents, and plant variety protection act registrations. Also, there may be other forms of intellectual property protection that are available for your invention or related business. Your discussion of the details of your innovation and the technical field of the invention will allow the patent attorney to determine what types of patent protection and other forms of intellectual property protection are available. Your patent attorney will also inform you about their technical experience and/or the experience of other professionals in their law firm in connection with the particular form of technology.
For each kind of patent the inventors must be identified. Inventorship is defined by law and cannot be manipulated. Thus, you must be forthcoming with information about who contributed to the invention to allow the patent attorney to allow the attorney properly determine inventorship.
You should also inform the patent attorney about any disclosures of your invention. People generally understand that they should keep the invention secret. However, the relevant patent law rules about how disclosure can harm your patent rights are not widely understood.
There are also several reasons why you may want to pursue a provisional patent application. The invention may be at the prototype stage and may potentially change. You may want to test the marketability of the invention. You may have a long timeline for developing a marketable version of the invention. These considerations and potentially many others may indicate that a provisional patent application is the better option for you.
The cost of the patent process is always an important consideration. The answer largely depends on the type of technology you have developed and your goals for protecting that technology. The more complicated the technology, the more work is required in drafting and prosecuting the application. Also, if you are seeking international patent protection, the costs can increase significantly. The cost of filing internationally depends on the number of countries in which you wish to seek patent rights.
In your meeting with a patent lawyer, the questions that should be addressed include:
In almost every situation, a patentability analysis should be performed to gauge the likelihood that the patent application will be successful. A patentability analysis is a standard due diligence practice for determining the chances of success for a patent application. You don't want to commit considerable resources to a patent application that has little to no chance of success. Patentability analysis includes a patent search from US and foreign patent databases, as well as sources of "non-patent literature", such as scientific and engineering literature databases. It should be understood that any public information that was available before you file a patent application is available as "prior art" to challenge the patentability of your invention. So scientific articles, products, Youtube videos, trade journals, and other publicly available material can be prior art if it discloses related technology that is materially related to your invention. Thus, the patentability analysis should take sources of such information into account. The search can also turn up potential infringement problems for your invention. Your invention may infringe prior patents. This is an important consideration before moving forward with a product or service.
You should ask your patent lawyer the following questions regarding the search:
If the patentability analysis is sufficiently favorable, the next step would be to move forward with an appropriate patent application. In the case of a utility patent application, you would need to choose between a provisional application or a non-provisional application. This decision is very fact specific and requires careful consideration of the present state of the invention (e.g., is it just a prototype, is it production ready, etc.), your specific business plans and timeline for launching the product or service, and many other potential considerations. A provisional application is often used when additional development is expected, as it secures a filing date without starting the formal examination process. A non-provisional application, on the other hand, is a full application that will be examined by the USPTO.
The decision on whether to file for foreign patent protections should be also considered at this stage. Foreign patent filings can be pursued later (within one year of the initial US filing), but the filing strategy, including foreign filings should be considered up front. For example, in some cases it makes sense to file an international Patent Cooperation Treaty (PCT) Application as the initial filing. Also, if you are considering foreign patent filings, the costs multiply with each country in which you choose to pursue patent rights. So, you need to have a careful discussion with your patent attorneys about the countries you are interested in and the associated costs.
The patentability analysis and prior art should be considered in drafting the patent application. The patent claims should be drafted in order to avoid rejections based on the prior art. Thus, the claims should be drafted to focus on the distinctions between the invention and the prior art. This issue should be discussed with your patent lawyer.
Once the patent lawyer has a clear understanding of your filing needs, the patent application can drafted. At this stage, you should ask your patent lawyer the following questions:
After the initial application is filed, the USPTO assigns it to an examiner who reviews it for compliance with patent laws, including novelty, non-obviousness, and utility. There are several potential obstacles that you may face during the patent application process. Commonly an application is rejected based on prior art or formal matters, where the patent examiner cites existing references and argues that your invention is anticipated or obvious to a person skilled in the relevant technology based on the teachings of the prior art. The examiner may issue an “office action” that rejects your application for these various reasons. Most applications experience at least one rejection. It is the patent lawyer's job to contact and inform the client of the office action, analyze the rejections in the office action, and provide strategies for overcoming the rejections, which may include legal and factual attorney argument and amendments to the claims. If you agree to move forward with a response to the office action, the attorney will draft a response according to the response and submit it to the United States Patent and Trademark Office. The cost of these responses are highly variable because the number of issues raised and the number of prior art references cited in the office action is highly variable. As the number issues and references increase, so do the costs.
The patent process typically takes 2-3 years from filing to approval, but it can vary based on the complexity of the invention and USPTO backlogs. Key milestones include filing the application, receiving the first office action (typically within 12-18 months), and responding to examiner rejections.
In some instances, it makes sense to schedule an interview with the examiner to discuss the case. This is particularly useful where it appears that the examiner has misinterpreted the technology or is misapplying the law. This is a useful tool in advancing patent examination in particular situations.
There are circumstances in which the attorney and the examiner can't find an agreement on the allowability of the claims, even though you and your attorney are confident that the claims are patentable. In such circumstances, an appeal of the examiner's rejections before the Patent Trial and Appeal Board (PTAB). This is an important skill set for patent attorneys.
With regard to examination and prosecution, you should ask the following questions:
Patent law is constantly evolving, particularly in areas such as patent subject matter eligibility, obviousness, and the written description requirement. Patent attorneys must stay current with these changes by attending major legal seminars and participating in IP law organizations such as the American Intellectual Property Law Association (AIPLA), and regularly reviewing key court decisions, such as those from the Federal Circuit and Supreme Court. Staying up-to-date with these developments allows patent attorneys to refine strategies and practices to ensure that your application complies with the latest legal standards and has the best chance of success.
Choosing the right patent attorney is crucial to ensuring the success of your patent application. You should select an attorney with technical expertise, legal experience, and client-focused approach. Our firm has obtained patents across various industries, from software and telecommunications to medical devices and biotechnology. Our attorneys have decades of experience handling patent applications in a wide variety of fields. We also have technical professionals on our staff in engineering and science disciplines that provide our attorneys with strong technical support. We take a strategic and thorough approach in handling our client's patent applications. Our approach to patent prosecution is both proactive and collaborative. We guide clients through each step of the process, from initial patent searches and application drafting to responding to office actions. Our technical background and legal expertise results in a high degree of success for our clients.
Our fee structure is designed to be transparent and predictable, providing you with a clear understanding of the costs involved in the patent process. When appropriate we provide flat-fee arrangements for patent preparation and filing, which includes drafting the application, filing it with the USPTO, and initial consultations to understand your invention. For other services, we may bill by the our due to the nature of the work, such as patent infringement disputes.
Beyond the initial filing, there may be additional costs for responding to USPTO office actions. Office actions are communications from the patent examiner requesting clarification, amendments, or rejections.
Attorney-client privilege is a legal principle that protects the confidentiality of communications between you and me as your attorney. This means that any information you share with the attorney related to seeking legal advice cannot be disclosed to third parties without your consent. The privilege encourages open and honest communication, ensuring we can provide the best legal counsel for your patent matters. Everything you disclose, from invention details to business strategies, is protected under this privilege, and it applies throughout our relationship. This includes the initial consultation and discussions before you become an official client.
Confidentiality is fundamental in intellectual property matters, and we take it very seriously. We have protections in place to ensure your information is protected. Sensitive documents are stored in secure, access-controlled systems. Only authorized personnel, who are bound by confidentiality agreements, can access your files.
Obtaining international patent protection involves filing patent applications in multiple jurisdictions to secure rights in various countries. Since there is no "global patent," the process typically starts with a Patent Cooperation Treaty (PCT) application, which provides a centralized mechanism to file a single application that can later be pursued in multiple countries. The key steps in this process are: filing the initial PCT application, entering the national phase in countries of interest, and managing the prosecution of each application individually according to local laws.
Our firm handles patent applications in countries throughout the world by working closely with a network of trusted foreign associates who are experts in their respective jurisdictions. After filing the PCT application, we strategically decide where to pursue national phase filings based on your business goals and markets of interest. Our approach to international patent protection is thorough and strategic. We will guide you by assessing your global business objectives, identifying key markets, managing timelines, and ensuring compliance with country-specific regulations to maximize your patent rights worldwide.
Patent infringement occurs when a party makes, uses, sells, or imports a patented invention without the patent holder’s permission. There are two types of infringement: direct infringement, where a product or process directly uses the patented invention, and indirect infringement, which includes contributory or induced infringement by others. If you believe your patent is being infringed, we can will help you evaluate the situation by conducting a detailed infringement analysis, sending cease and desist letters, handling negotiations and licensing, and if necessary, pursuing litigation.
Throughout the enforcement process, we will guide you by providing clear, practical advice, managing litigation timelines, and leveraging expert witnesses if necessary, always working to protect and enforce your patent rights in a cost-effective manner.
Before meeting with a patent attorney, it's important to prepare by gathering all relevant information about your invention to set up a productive meeting. You should bring a detailed description, sketches, or prototypes of your invention, as well as any research or documentation that shows the development process. If you have conducted any prior art searches, bring those results as well. Additionally, if your invention has been publicly disclosed, whether through a publication, sale, or use, be prepared to discuss the details, as this can affect patentability.
Being honest and open with your patent attorney is critical. Withholding information, especially about prior disclosures, third-party collaborations, or other relevant matters, can lead to a compromised patent application and potential invalidation of your patent later on. Transparency provides an opportunity to prepare a strategy that mitigates risks, deals with any prior disclosure, and enhances the strength of your patent.
During the initial consultation, we take a comprehensive approach. We inquire about your invention in detail, including its functionality, technical aspects, and potential market use. Our goal is to understand your invention fully and provide guidance on the next steps, including the type of patent that fits your needs and the overall process.
Clear communication is essential throughout the process, and we make ourselves available to provide updates, answer queries, and guide you through each phase of the patent process.
At Sierra IP Law, we have a proven track record with a high success rate in patent applications. Our decades of experience and client-focused approach ensure thorough and effective handling of every case. We maintain open and effective communication and have successfully obtained hundreds of patents on behalf of our clients.
© 2024 Sierra IP Law. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the legal professional community, and should not be viewed as a substitute for legal consultation in a particular case.
Securing a patent is not merely about describing the invention, filling out forms, and submitting them to the United States Patent and Trademark Office (USPTO). It's an extensive process that requires deep knowledge of patent law, technical expertise, and strategic planning. Patent attorneys and law firms bring a wealth of experience in patent strategy, risk management, and legal advocacy, making them invaluable assets for inventors and businesses alike.
As patent attorneys, our primary role is to assist inventors and companies in securing legal protection for their innovations through patents. The patenting process requires careful evaluation of the invention, a patentability analysis, and meticulous, strategic drafting such that the patent application presents the invention in a manner that maximizes its chances of being granted a patent. Each of these tasks requires a high level of skill and foresight.
Patent attorneys play a crucial role in helping inventors and companies protect their inventions and navigate the patent process. But what does a patent attorney do, and why are they indispensable in the patenting process?
Firstly, patent attorneys work closely with the inventors to thoroughly understand their invention. This involves detailed discussions to grasp the nuances and unique features that distinguish their innovation from existing technologies. The invention is also evaluated to determine whether it meets certain formal requirements of a patentable invention, including whether it falls into one of the statutory categories for an invention and whether the invention has been sufficiently reduced to practice to enable a person of ordinary skill in the relevant art to practice the invention.
Once the patent attorney thoroughly understands the invention, a further discussion is held regarding how the client will offer the invention as a product or service and how a competitor may try to offer a competing product or service. This discussion allows the attorney to focus on the most economically important aspects of the invention and to anticipate potential design-arounds that competitors may attempt.
Subsequently, a patent search is performed to assess whether the invention is patentable. The invention is compared to related prior art found in the search to determine whether the invention is both novel and non-obvious in view of the related prior art. This step is crucial to identify prior art that could potentially prevent the invention from being patented. The due diligence process minimizes the risk of rejection and informs the drafting of a robust patent application.
If the invention's patentability is established, the inventors are advised on the best strategies to protect their intellectual property. The client needs to understand the scope of patent protection that is available in view of the prior art. Only the novel and non-obvious aspects of the invention can be a basis for patentability and the claims should be focused on those aspects.
Once these early determinations are made, the patent attorney may advise moving forward with drafting a patent application, if the patentability analysis warrants it.
A well-crafted utility patent application is essential to prevent competitors from easily designing around the patent. Key aspects include:
A well-prepared utility patent application enhances the likelihood of approval and strengthens the enforceability of the patent. It provides robust protection, allowing inventors and companies to secure their competitive advantage and capitalize on their innovation.
The handling of the patent examination process is critical to the success of the patent application. The assistance of a patent attorney is a necessity, if you want to ensure that the application is properly prosecuted. It is the job of the patent attorney to understand the patent law, the ministerial processes of the patent office, and the strategies for overcoming any rejections made by the patent examiner.
Once a patent application is filed, the patent office conducts a search for existing patents and other prior art, and then analyzes the patent claims to determine the patentability of the claimed invention. The patent examiner drafts and issues an office action providing their analysis, which may indicate that the claims are patentable (allowed), the claims are rejected for formal, lack of novelty, and/or obviousness issues, or some of the claims are allowed and some are rejected. It is the patent attorney's role to analyze the office action, determine whether the examiner's position is in accordance with patent law, and to prepare a response that includes claim amendments and/or arguments that address the issues in the office action. It is the goal of the patent attorney to make the approval process as quick as possible, while securing the broadest possible protection for the invention. Our patent attorneys have extensive training in patent law and experience in communicating with patent examiners. Patent rejections can often be resolved through an interview between the patent attorney and the examiner. However, not all patent cases progress swiftly. In some cases, there are several office actions issued. This usually occurs where the invention is closely related to the prior art.
If a patent application is rejected, our patent attorneys are equipped to handle appeals before the Patent Trial and Appeal Board (PTAB), and other proceedings, including Post-Grant Reviews (PGRs) and Inter Partes Reviews (IPRs). These proceedings are complex legal processes that require specialized knowledge in patent law and technical expertise in the relevant field.
When a patent application is rejected by a patent examiner, the rejection may be appealed to the PTAB. A patent attorney represents the applicant in appealing the decision. The attorney prepares detailed legal briefs arguing why the invention meets all patentability requirements, challenging the examiner's position. The examiner is then forced to defend their position before the patent judges of the PTAB. The attorney may also present oral arguments before the board, responding to questions and clarifying points to persuade the judges to overturn the rejection.
In Post-Grant Reviews (PGRs) and Inter Partes Reviews (IPRs), the patent attorney may represent either the patent owner or a third party challenging the patent. In these trial-like proceedings, the attorney's role includes:
By leveraging their legal acumen and technical understanding, patent attorneys help navigate the PTAB process. Their expertise increases the likelihood of a favorable outcome, whether securing patent rights or challenging the validity of a competitor's patent, thereby significantly influencing a company's intellectual property strategy and competitive position.
A patent attorney brings specialized skills and invaluable expertise to patent disputes and litigation. Their deep understanding of both patent law and the technical nuances of the invention is invaluable in navigating complex legal disputes. One of their primary skills is the ability to interpret and analyze patent claims, which define the scope of protection provided by a patent. An accurate interpretation requires thorough examination of the patent specification, drawings, claims, and examination history of the patent (the patent filewrapper) and how the patent claims apply to the alleged infringing product or process.
In litigation, patent attorneys craft legal arguments concerning infringement and validity. They assess prior art to determine if a patent should have been granted in the first place or if the accused product infringes on existing patent rights. Their technical background enables them to work effectively with expert witnesses, translate complex scientific concepts into understandable terms for judges and juries, and challenge opposing experts' credibility.
Laypeople and attorneys not trained in patent law might not realize the significance of claim construction in patent cases. Patent attorneys engage in Markman hearings where the court interprets patent claims, a pivotal process that can determine the outcome of a case. They are also adept at navigating doctrines unique to patent law, such as the doctrine of equivalents, which allows for a finding of infringement even when the accused product does not literally infringe on the patent claims but performs substantially the same function in substantially the same way to yield the same result.
In essence, the combination of legal acumen and technical expertise allows patent attorneys to effectively enforce and protect intellectual property rights in disputes and litigation, providing a level of proficiency that non-patent attorneys lack in this specialized field.
One of their primary roles of a patent attorney is drafting and negotiating licensing agreements. They ensure that the terms accurately reflect the parties' intentions and that the scope of the license—whether exclusive or non-exclusive—is clearly defined. This precision helps prevent future disputes and protects the client's interests.
In transactions involving patents, such as acquisitions or asset purchases, a patent attorney conducts thorough due diligence. They assess the validity and enforceability of the patents in question, identify any potential infringements, and evaluate the overall strength of the patent portfolio. This analysis is crucial for determining the value of the patents and for making informed business decisions. Additionally, patent attorneys anticipate future developments by including terms related to improvements, modifications, and technologies closely related to the patents in the transaction. This foresight protects clients from unintended consequences that might arise from technological advancements or changes in patent holdings.
In summary, a patent attorney's expertise is invaluable in patent licensing and transactions. They provide a level of proficiency that goes beyond general legal knowledge, safeguarding clients' intellectual property assets and facilitating successful business outcomes.
A patent attorney has both legal and technical backgrounds. Patent attorneys are licensed attorneys that have a background in science and/or technology. A patent attorney must have at least a bachelor's degree in a hard science or engineering in order to be registered as a patent attorney. Specializing in patent law entails the core services of patent procurement, including performing patent searches, drafting and filing patent applications, and prosecuting patent applications before the US Patent and Trademark Office.
Beyond having a degree in a scientific or engineering discipline, an aspiring patent attorney must have a Juris Doctor degree from a law school, pass the bar exam, and pass the USPTO registration examination, commonly known as the patent bar exam. This certification allows them to represent clients before the USPTO. More importantly, a patent attorney must undertake extensive education and training in order to properly practice patent law, which is a highly complicated area legal discipline. Our patent attorneys have decades of experience and have a complete tool kit for assisting our clients. We also engage in continuing legal education and professional development, staying abreast of evolving patent laws and regulations.
For inventors and companies, the value of engaging a patent attorney cannot be overstated. The patent process is complex. The patent attorney's expertise helps clients avoid costly mistakes that could compromise their ability to protect and monetize their innovation. Patent attorneys also provide strategic value by aligning the patent strategy with the client's business objectives. We as patent attorneys provide insights on how to leverage patents to gain a competitive advantage, attract investors, and license patents and other intellectual property.
Patent attorneys also advise on patent infringement and litigation. In cases of infringement, we assist in enforcing patent rights or defending against allegations, thus safeguarding the client's interests.
In summary, as patent attorneys, we play a vital role in transforming an idea into a protected asset. Our legal and technical expertise not only help in securing patent protection but also add significant value by enhancing the commercial potential of the invention. Engaging a patent attorney ensures that inventors and companies can confidently navigate the complexities of patent law, ultimately maximizing the return on their innovations.
For more information, contact our office for a free consultation with a patent attorney who can guide you through the process.
This article is for informational purposes only and does not constitute legal advice.
If you have received a cease and desist letter asserting trademark infringement, you may be feeling uncertain about your next steps. A cease and desist letter can be intimidating, but understanding its implications and how to respond can make a significant difference for your business. This article aims to provide you with an overview of what to expect, how to respond, and what considerations to keep in mind regarding trademark law.
A trademark cease and desist letter is a formal notice from a trademark owner alleging that your use of a particular mark is infringing upon their trademark rights. This could involve the unauthorized use of a federally registered trademark, a trademark registered with a state government, or an unregistered trademark in which the owner believes they have established trademark rights through their use of the mark in commerce. The letter typically demands that the infringing party stop using the allegedly infringing trademark, remove any infringing materials, and potentially provide compensation for damage they believe they have suffered as a result of the alleged infringement.
The trademark owner's goal in sending a cease and desist letter is to enforce their proprietary rights without immediately resorting to a lawsuit. If you are a business owner who has received such a letter, you must act quickly to evaluate the claims, as ignoring the demand could lead to further legal action or a lawsuit.
Trademark infringement occurs when a party uses a mark that is likely to cause confusion with a trademark owner’s mark or that causes actual consumer confusion between infringing party and the trademark owner. The infringing mark must be used in commerce in a manner that is likely to cause consumer confusion. This typically means that the mark is the same or similar and is used by the alleged infringer in connection with goods or services that are related to the trademark owner’s goods or services. Infringement can occur even if the marks or the goods and services are not identical.
Trademark rights can arise from both federal registration and common law rights through actual use in commerce. This means that a trademark owner with an unregistered trademark may still have enforceable rights, especially if they have been using the mark continuously for a substantial period of time that began prior to your use. Trademark infringement can be intentional or unintentional. The key consideration is whether the trademark use causes actual consumer confusion or is likely to cause consumer confusion with the trademark owner’s business and reputation.
To properly assert a claim of trademark infringement, the trademark owner must demonstrate that their trademark is valid, protectable, and that your use of the mark creates a likelihood of confusion with their trademark. The likelihood of confusion standard is central to trademark infringement analysis, and courts rely on several factors to make this determination, as articulated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) ("DuPont factors"). These factors include:
Both federal and state courts and the United States Patent and Trademark Office (USPTO) use these factors or a similar set of factors to determine whether there is an infringement. If the trademark owner can establish a likelihood of confusion, then you, as the alleged infringer, could be liable even if you were unaware that your activities infringed on someone else’s trademark rights.
The trademark owner who has suffered damage from the unauthorized use of their trademark may pursue legal action, including filing a complaint in state or federal court. Remedies that may be available include:
In some cases, the infringing party may negotiate a settlement and/or a license to use the trademark owner's mark, but this would depend on the willingness of the parties to come to an agreement.
Trademark disputes can be resolved through alternative dispute resolution (ADR) methods, such as mediation or arbitration, which can provide a more efficient and cost-effective alternative to litigation. These methods allow the trademark owner and the infringing party to negotiate a mutually agreeable outcome with the help of a neutral third party, often avoiding the complexities and expenses of a federal lawsuit. Mediation, in particular, encourages open dialogue and may lead to creative solutions, such as licensing agreements, while arbitration offers a binding resolution that can be reached more quickly than a traditional court proceeding. Considering ADR as a tool resolving trademark disputes can save both parties significant time and money, potentially leading to a satisfactory resolution.
Ignoring a trademark cease and desist letter is a risky strategy due to the potential escalation to litigation. If you fail to respond, the trademark owner may escalate the situation by filing a complaint in state or federal court. This can lead to costly litigation, potential monetary damages, and even a court order requiring you to stop using the mark.
Trademark infringement occurs under federal law, specifically the Lanham Act, even if you were unaware of the trademark owner's rights. Acting recklessly or failing to ensure that your mark does not infringe the asserted mark could lead to significant liability. Furthermore, if the trademark owner proves that you acted in bad faith, you could also be liable for attorney's fees and other penalties.
To avoid trademark infringement, always conduct a thorough search of existing trademarks before adopting a new mark. This search should include registered trademarks and common law uses to ensure your mark is unique and not likely to cause confusion with an existing one. Additionally, evaluate whether your proposed mark may be similar to registered or unregistered marks in the same industry. If there is any uncertainty about the availability or strength of a proposed mark, it is probably time to consider modifying the mark or choosing a different mark.
A trademark attorney can help you understand the complexities of trademark law, including how trademarks are established, enforced, and protected under federal law. Whether you need to respond to a cease and desist letter, defend against claims of infringement, or explore options for a license or other settlement, having experienced legal counsel is essential.
It is important to note that cease and desist letters are often sent to assert claims before initiating formal legal action. How you respond can significantly affect the outcome of the case and your business's ability to continue using its mark. By consulting an attorney and developing a strategic response, you can mitigate the risks and protect your brand.
Receiving a trademark infringement letter can be daunting, but it is important not to panic. By understanding your rights, evaluating the allegations carefully, and promptly seeking appropriate legal counsel, you can make informed decisions about how to respond. Whether you choose to challenge the claims, negotiate a settlement, or cease the infringing activities, you should act promptly and strategically to protect your business and intellectual property.
For more information, contact our office for a free consultation with a trademark attorney who can guide you through the process.
This article is for informational purposes only and does not constitute legal advice.
Sierra IP Law, PC - Patents, Trademarks & Copyrights
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