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.
Amazon is a global leader in e-commerce and is a critical platform for many small businesses. It is widely known that Amazon has established a brand registry program aimed at providing significant protection and control for brand owners over their intellectual property on the platform. However, many entrepreneurs do not have a clear understanding of the registry and its trademark requirements. We regularly field inquiries about its requirements and benefits. Amazon has recently relaxed its trademark registration requirement, allowing access to the brand registry based on just the filing of a trademark application (e.g., with the United States Patent and Trademark Office). This change will allow trademark holders to gain the protection of the brand registry much earlier than the previous rules allowed.
The Amazon Brand Registry is designed to help businesses protect their unique, registered brands, enhance their search query performance, and guard against trademark infringement in the Amazon marketplace. We provide a detailed explanation below of Amazon's brand registry trademark requirements, the benefits of enrolling, and the tools available for brand owners.
To participate in Amazon's Brand Registry, you must fulfill certain eligibility requirements. Until recently, Amazon required an active registered trademark in each country where the brand seeks protection. A proper trademark under the brand registry rules is a word mark or design mark that appears on products or packaging.
Amazon has recently expanded the eligibility for brand registry to allow a trademark owner to be admitted to the brand registry with a pending trademark application filed with the appropriate trademark office in the country in which they seek acceptance to the registry. If you are an entrepreneur launching a new brand through the Amazon platform, you can quickly file a trademark application with the US Patent and Trademark Office and enroll your brand on Amazon. This allows you to launch a new brand and establish the corresponding trademark as an Amazon registered brand very quickly, reducing the risk that a third party will establish use of the trademark before you.
However, pursuing a trademark registration can have its challenges. There may be similar marks that have been previously registered, or there may be issues with the form of the trademark that you have selected, such as descriptiveness or the inclusion of a surname. You should seek the assistance of an experienced trademark attorney before you file a trademark application. The attorney can vet the trademark and work with you to put your brand in the best possible condition before committing to the trademark registration process. For example, the trademark attorney will perform a thorough trademark search before filing a trademark registration application. If there are major issues discovered in the search, an experienced trademark attorney can counsel you through adjusting your brand strategy. This brand vetting process is highly recommended as it can ensure that the trademark registration process and your brand rollout proceed smoothly, allowing you to fully leverage Amazon's platform.
However, by allowing brand registry acceptance with just a pending trademark application, Amazon has created incentives for potential trademark extortion and fraud. Opportunists may apply for the registry based on pending trademarks for the same brand names already used by others and the usurp the opportunity to join the brand registry from the trademark owner. The fraudster may then submit infringement notices against the trademark owner and/or try to extort payment in exchange for the transfer of the trademark filing. Also, the new policy may allow for the placement of invalid trademarks on the registry (e.g., descriptive, generic, or otherwise unregistrable marks).
If a trademark rights owner runs into any kind of trademark extortion or fraud, they should not cooperate with the offending party. Any trademark application or registration that is filed fraudulently in an attempt to extort a trademark owner or trade on a trademark owner's goodwill can be challenged and removed through the US Patent and Trademark Office. A trademark infringement lawsuit may also be filed against the perpetrator of such fraud or malfeasance.
To enroll in Brand Registry, you must have a seller account and provide a trademark registration certificate or evidence of a pending trademark application. Enrolling requires logging into a seller central or brand registry account and submitting details including the serial number of the trademark application and supporting documentation from the trademark office. Once you complete these steps, you gain access to Brand Registry, which offers several key benefits. Here is an outline of the general steps for signing up for a brand registry account:
One of the most significant brand registry benefits is the ability to control product listings and protect against trademark infringement. When you enroll a brand, you can monitor unauthorized uses of the trademarked brand, report counterfeits, and protect your brand using Amazon's automated protections.
The registry provides helpful tools to protect intellectual property and ensure distribution information about your products is accurate. The automated protections use advanced machine learning to identify and flag reports of infringement, thus preventing unauthorized sellers and counterfeit goods from going unnoticed. These measures give registered brands a significant competitive edge over other sellers who are not enrolled.
Another advantage of enrolling in the brand registry is increased control over product listings and the ability to create an official Amazon store for each brand. This can help you build a trusted relationship with customers and elevate your brand on Amazon. By utilizing these features, brands can better position themselves in multiple categories and enhance their visibility in the Amazon marketplace.
Amazon Brand Registry acts as a tool to protect against trademark infringement. The brand registry utilizes a proprietary system to enable brand owners to report violations effectively. Through the violation tool, registrants can easily flag infringing content, including unauthorized use of their brand name or logo by other sellers.
A critical aspect of brand registry benefits is combating trademark infringement and counterfeit goods. Amazon provides tools like the infringement report to flag unauthorized sellers and listings that violate intellectual property rights. Amazon sellers enrolled in the brand registry can use these tools to maintain the integrity of their trademarked brand and prevent abusive conduct by competitors.
Amazon also emphasizes proactive measures. By integrating advanced machine learning techniques, Amazon helps brand owners protect their intellectual property before an infringement occurs. For instance, if an infringing product is detected through a trademark search, Amazon can remove it automatically, thereby limiting the need for continuous manual intervention.
For those managing multiple brands, Amazon’s brand registry allows the consolidation of various trademarked brands under a single brand registry account. This centralization of control aids rights owners in maintaining oversight over all their intellectual property registered on the platform, especially in cases involving new brands or expansion into multiple categories.
The registry provides a brands tab that allows you to track product listings and manage any issues such as technical issues that might arise. Amazon also provides brand registry support, accessible through the seller central dashboard, ensuring brand owners receive the necessary assistance.
Being part of the brand registry provides a significant competitive edge by offering selling features that are not available to other Amazon sellers. These features include the ability to control the branding of products, customize the brand experience on Amazon stores, and protect the brand in Amazon from misuse or unauthorized sales. Moreover, rights owners benefit from increased visibility through enhanced search terms related to their brand and products.
The brand registry also provides useful data on consumer interactions through search query performance, enabling brand owners to optimize their product listings. The data allows the registrant to adjust marketing strategies to better cater to consumer demands and outperform competitors.
Enrolling in Amazon's Brand Registry is an important step for any brand owner wishing to establish a strong presence in the Amazon marketplace. With tools and features that offer automated protections, simplified trademark searches, and methods to report violations, brand owners gain critical control over their registered trademarks and product listings. The ability to enroll a brand with a pending trademark provides a faster track for acceptance to the registry.
In summary, Amazon's brand registry requirements and tools provide both opportunities and challenges for trademark owners. Leveraging the available features effectively can help protect a trademarked brand, promote consumer trust, and maintain a competitive edge the crowded Amazon marketplace. To promote and protect your brand through the registry, it’s imperative to understand the eligibility requirements, pursue the trademark registration process, and diligently pursue registration of the brand on the registry.
To ensure a smooth and effective enrollment in Amazon Brand Registry, it is highly recommended that prospective members consult with an experienced trademark attorney to vet and prepare a proper trademark application. Trademark registration can be a complex process that requires careful consideration of the mark’s distinctiveness, compliance with jurisdictional requirements, and proper preparation of the application. An experienced attorney can help navigate these complexities, ensuring the trademark application is thoroughly vetted, properly drafted, and optimized for a successful registration, ultimately safeguarding your brand's interests on Amazon.
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.
Descriptive trademarks are marks that describe a characteristic, quality, or function of a product or service. Unlike other marks that distinguish the source of a product, a descriptive trademark identifies something inherent about the goods or services themselves. For instance, a descriptive mark such as "Cold and Creamy" for ice cream or "Beefy Burgers" for a burger joint provides information about the nature of the product rather than its origin. US trademark law affords less trademark protection for descriptive marks. It is challenging to register descriptive trademarks because their descriptive nature makes them less distinctive. To gain exclusive rights, these marks must acquire secondary meaning, demonstrating that consumers associate the term with a particular source. Businesses and entrepreneurs should understand the disadvantages and rules associated with descriptive trademarks so that they can make informed decisions in their branding.
The rationale for providing less protection for descriptive trademarks stems from the principle that language describing a product or service should remain available for general use by all competitors. Descriptive marks merely convey information about the goods or services, such as size, color, quality, or ingredients, as explained in In re TriVita, Inc. If trademark law granted exclusive rights to descriptive terms, it could unfairly prevent other businesses from using common words necessary to describe their own goods or services.
For instance, allowing a single company to exclusively own a mark like "Cold and Creamy" for ice cream would unfairly restrict competitors from using those ordinary terms to describe their products. By limiting protection for descriptive marks, US trademark law promotes competition and prevents monopolization of common language that consumers rely on to understand the nature of products.
Descriptive marks can still achieve trademark protection if they acquire distinctiveness or "secondary meaning" in the mind of the consumer, also known as acquired distinctiveness. This means that the public has learned to identify the mark specifically with the company or other source of the goods or services sold under the trademark. Even if a trademark identifies characteristics of the underlying goods or services, legal protection may be achieved by showing that consumers associate the descriptive term with a specific source. To achieve secondary meaning, a business must demonstrate that the public recognizes the mark as more than just a merely descriptive word or phrase. Factors that help establish this include extensive and consistent use, significant advertising, sales success, and media coverage over time. Once acquired distinctiveness is established, the descriptive mark becomes eligible for full trademark protection, granting exclusive rights. The benefits of achieving secondary meaning are significant, as it allows the owner to protect the mark from competitors, ensuring that the descriptive mark is tied to their brand and not simply to the characteristics of their goods and services.
A famous example of a descriptive mark that has acquired distinctiveness is American Airlines. Every US-based airline is an "American airline", and thus the mark is descriptive. However, American Airlines has been in business for decades and has engaged in extensive advertising that has established its name in the mind of American consumer as a distinctive provider of air travel. Another famous example of a descriptive trademark that has acquired secondary meaning is International Business Machines (IBM). The phrase "international business machines" is descriptive of typewriters, which were the original goods that the company offered. However, with time the brand became a household name and thereby developed secondary meaning and strong trademark rights.
There are five categories of trademarks ranging from generic marks to fanciful marks, each with varying levels of protectability. Generic trademarks are not protectable at all, as they refer to the actual name of the goods or services and cannot function as a protectable trademark. For example, "Milk" for, e.g., whole milk is a generic term, and no one can claim exclusive rights to it. See our discussion of generic trademarks here.
As discussed herein, descriptive marks merely describe a characteristic of the product and require proof of acquired distinctiveness or secondary meaning to become protectable.
Suggestive trademarks suggest a characteristic of the goods or services but require a consumer to make a mental leap to understand the connection. For instance, "Coppertone" is a suggestive mark for use on sunscreen, as it hints at a bronzed appearance without directly describing the product, making it more protectable than a descriptive mark.
Arbitrary marks are words with common meanings unrelated to the goods or services offered. A famous example is "Apple" for computers. These marks are inherently distinctive because there is no logical connection between the word and the product.
Finally, fanciful trademarks are entirely invented for the sole purpose of functioning as a trademark. "Xerox" is a coined term for use in connection photocopiers and is a good example of a fanciful trademark. Another example of a fanciful mark is RIVIAN as it is a made up term with no prior meaning or connection to vehicles. Since they have no meaning outside of the brand, fanciful marks are the most inherently distinctive and thus the most protectable. Understanding this spectrum of trademark strength is quite helpful for selecting strong, protectable trademarks and brands.
The United States Patent and Trademark Office (USPTO) allows descriptive trademarks to be registered either on the Supplemental Register or, if they have acquired secondary meaning, on the Principal Register. Initially, most descriptive marks will not qualify for the Principal Register due to their lack of inherent distinctiveness. However, with proof of continuous and exclusive use or significant advertising over time, a mark may acquire secondary meaning and become eligible for the Principal Register.
A trademark registration application for a descriptive mark can be filed with a declaration of acquired distinctiveness under Lanham Act Section 2(f) if the mark has been in use for at least five years or there is other evidence of acquired distinctiveness. If a declaration under Section 2(f) cannot be filed, the examining attorney assigned to review the application will likely refuse registration on the principal register based on descriptiveness under Lanham Act Section 2(e)(1). In such a case, the trademark will only be allowed to be registered on the Supplemental Register. The Supplemental Register offers less protection than the Principal Register. See our discussion of the differences between the Principal and Supplemental Registers here. Once the applicant can demonstrate acquiring distinctiveness, the Applicant can re-apply for the Principal Register.
A trademark application for a descriptive trademark must also meet all the other requirements for registration, including being unique and not confusingly similar to any prior registrations or pending applications on file with the trademark office. The examining attorney will also issue a disclaimer requirement for any unregistrable portion of the mark, meaning the applicant cannot claim exclusive rights to that portion. For example, the word "burger" in BURGER KING has to be disclaimed because it is highly descriptive of the food offered by the restaurant.
Hiring a trademark attorney is an important step for businesses trying navigate the trademark process, trademark management, and trademark enforcement. US trademark law and practice is complex and there are many issues and subtleties that the uninitiated will likely miss.
Trademark enforcement is essential to protect your brand from trademark infringement. Actions like sending cease and desist letters, filing lawsuits, and seeking damages when others use your mark without permission should not be attempted without an expert. A trademark attorney is vital in this process, ensuring your rights are properly enforced and your brand remains protected.
A trademark attorney can assist in choosing a strong trademark. Fanciful marks, arbitrary marks, and suggestive marks are clearly more advantageous than merely descriptive marks. In a perfect world, arbitrary or fanciful marks are ideal because they offer the strongest protection. A trademark attorney can guide you through understanding the strength of your mark and whether it qualifies as inherently distinctive when examined by the USPTO.
Developing a strong trademark strategy is key to preventing infringement in the first place. A well-crafted strategy involves thorough trademark searches to ensure your mark is unique, registering your trademark with the United States Patent and Trademark Office (USPTO), and monitoring for potential conflicts. By engaging a trademark attorney, you can ensure that your business avoids costly legal disputes and that your trademark is properly managed and enforced.
In the long term, a proactive trademark strategy helps safeguard your brand’s identity, allowing you to build a reputation without the risk of unauthorized use by others. An attorney’s expertise can protect your intellectual property and provide peace of mind as your business grows.
If you have a business reputation or brand that deserves protection, contact our office for a free consultation. The attorneys at Sierra IP Law have decades of experience in trademark practice.
This article is for informational purposes only and does not constitute legal advice.
Trademark strength refers to the level of distinctiveness of a sign, which can be illustrated on a spectrum from strong to weak. Fanciful marks are the strongest, while generic marks are the weakest. Descriptive marks can acquire secondary meaning or distinctiveness over time, making them registrable as trademarks. Another key consideration in determining the strength of a mark is whether there are other similar marks used by third parties. A trademark may be weak due to the existence of many co-existing third-party trademarks that are the same or similar. This phenomenon is referred to as a "crowded field," which presents unique challenges for applicants and examining attorneys alike when assessing the strength and protectability of a particular mark. In such environments, suggestive marks, descriptive marks, and even arbitrary or fanciful marks can be weakened. This impacts the enforceability of the mark.
A crowded field arises when numerous similar or identical trademarks coexist in the marketplace, diminishing the distinctiveness of any one particular mark. In such scenarios, even otherwise strong trademarks may be considered weak due to their inability to stand out from the similar marks. As a result, trademarks in crowded fields often face challenges in securing trademark protection and may receive objections from the trademark office based on a likelihood of confusion refusal.
When an examining attorney evaluates a trademark application in a crowded field, they assess the likelihood that consumers may confuse the applied-for mark with existing marks. The more crowded the field, the greater the potential for similar marks to coexist without confusing consumers, as they have become accustomed to distinguishing between similar marks based on other factors, such as trade channels or commercial impression.
Trademarks are generally categorized on a spectrum of distinctiveness, ranging from generic to fanciful. Marks that fall on the weaker end of this spectrum, such as descriptive marks or generic trademarks, often face greater hurdles in crowded fields. Generic marks, for instance, cannot obtain trademark protection at all because they merely describe the common name for goods or services. Descriptive trademarks, on the other hand, may gain protection only if they acquire secondary meaning, where consumers begin to associate the descriptive term with a specific source. It is particularly difficult for a descriptive mark to gain secondary meaning in a crowded field because the mark is similar to many other marks for related goods or services.
Conversely, suggestive marks—those that require consumers to use imagination or reasoning to connect the mark with the goods or services—are inherently stronger. A suggestive mark hints at, rather than directly describes, a characteristic or quality of the product. Despite being stronger than descriptive marks, suggestive trademarks can still be weakened when many similar marks coexist in the marketplace. However, suggestive marks can become registered mark since the applicant can argue that the mark is registerable because there is no likelihood of confusion between the numerous similar marks that co-exist in the marketplace. This is generally referred to as a "crowded field" argument in trademark law.
In some cases, even arbitrary marks or fanciful marks, which are considered strong trademarks, may lose distinctiveness in a crowded field. However, a strong trademark may be weakened by the existence of a crowded field. A crowded field is less likely for fanciful trademarks. However, even in the event of a crowded field for a fanciful mark, the mark can likely be registered based on a crowded field argument.
Trademark applicants sometimes face a crowded field issue in the registration process. In such cases, the applicant's mark may face an office action issued by the US Patent and Trademark Office that includes a refusal based on likelihood of confusion with one or more marks in the crowded field. A likelihood of confusion refusal occurs when the examining attorney believes that consumers may mistakenly believe that the goods or services originate from the same source as those of a registered mark.
The applicant can submit an office action response arguing that the crowded nature of the field weakens the distinctiveness of the cited registered mark, and thus the applicant's trademark is not confusingly similar. When there are numerous similar marks already registered, the argument follows that consumers are more discerning and capable of distinguishing between similar marks in the marketplace. The federal courts and the Trademark Trial and Appeal Board (TTAB) have acknowledged that marks in a crowded field are less likely to cause confusion because consumers have come to expect subtle differences among competing marks in the same industry.
Providing evidence of third-party use of similar marks in the same trade channels can support the argument that a particular mark is unlikely to cause confusion. By demonstrating that similar marks have coexisted peacefully in the market, applicants can make a compelling case that their applied-for mark should be allowed to advance to trademark registration despite the crowded field.
Another important consideration when evaluating trademark weakness in a crowded field is the commercial impression conveyed by the trademark. The overall impression created by a mark in the minds of consumers can help distinguish it from similar marks, even in a crowded field. Marks that share common elements, such as a word or phrase, may still convey different meanings or impressions when viewed in their entirety. This distinction can help mitigate the likelihood of confusion between two marks.
For example, two marks that include the word "squeeze" for juice-related services may coexist without confusion if one is styled in a distinctive manner, includes additional design elements, or conveys a different commercial impression overall. See In re Boston Juicery, LLC. In this case, the distinctiveness of the commercial impression outweighs the similarity of the word marks.
Similarly, the trade channels through which the goods or services are marketed can also play a role in determining the likelihood of confusion. If two marks are used in entirely different trade channels, such as one being sold online and the other exclusively in brick-and-mortar stores, the likelihood of confusion is diminished. An experienced trademark attorney can help applicants analyze the trade channels of the applied-for mark and the cited mark to strengthen their arguments against a confusion refusal.
Once an applicant receives an office action for a likelihood of confusion refusal, it is crucial to analyze the cited mark and the goods and services identified. A well-researched and articulated office action response can include arguments related to the crowded field, commercial impression, and trade channels, as well as evidence of third-party use of similar marks. In some cases, it may be necessary to file an appeal with the TTAB if the examining attorney maintains the refusal in a final office action.
The TTAB applies the du Pont factors to assess the likelihood of confusion, with the similarities between the marks and the relatedness of the goods or services being the most critical factors. However, other du Pont factors, such as the number and nature of similar marks in use, the conditions under which consumers make purchasing decisions, and the overall commercial impression, can also be pivotal in appeals. A strong argument can sway the TTAB in favor of the applicant, especially if the cited mark is shown to be weak due to the crowded field.
To establish a crowded field in the trademark application process, begin by conducting a comprehensive clearance search of the USPTO and third-party databases to identify existing similar or identical marks. This search should focus on marks that share common elements with the applied-for mark, especially those within the same industry or related trade channels. After gathering this information, compile evidence of multiple co-existing marks to demonstrate that consumers are accustomed to distinguishing between similar trademarks in the marketplace. To further strengthen your case, submit examples of third-party registrations and emphasize how these marks have peacefully coexisted without causing confusion.
Additionally, it is important to provide evidence of no actual consumer confusion. This may include declarations from individuals or companies showing years of concurrent use of similar marks without any reported confusion. By highlighting these facts in your office action response, you can argue that the coexistence of your mark will not create confusion, supporting the registration of your trademark in a crowded field.
In trademark infringement litigation, evidence of a crowded field is used to argue that the asserted trademark is weak, making it less likely to cause consumer confusion. By demonstrating that many similar marks coexist in the marketplace, the defendant can assert that consumers are accustomed to distinguishing between them. This weakens the plaintiff’s claim of exclusivity over the mark. Courts may consider third-party registrations, examples of concurrent use without confusion, and the descriptive or suggestive nature of the mark to determine that the mark's scope of protection should be limited in a crowded field.
Trademark law includes many esoteric issues like the crowded fields. It is highly recommended that you seek the assistance of an experienced trademark attorney, who can analyze the commercial impression, trade channels, and existing third-party marks to improve a trademark applicant's chances of success in securing trademark protection.
For more information, contact our office for a free consultation with a trademark attorney who can guide you through 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 legal professional community, and should not be viewed as a substitute for legal consultation in a particular case.
The U.S. Patent and Trademark Office (USPTO) offers two registers for trademarks: the Principal Register and the Supplemental Register. The registers are official lists of each trademark registered with the USPTO. It is preferred to register trademarks on the Principal Register because its offers more benefits and protections. The Supplemental Register is provided for weaker, descriptive marks, but still provides significant benefits. This article explains the role of the registers and the differences between registrations on each register.
The Principal Register is the primary and most familiar register within the U.S. trademark system, offering the most comprehensive benefits and protections for trademark owners. Trademarks registered on the Principal Register enjoy several legal advantages, including the presumption of ownership and the exclusive right to use the mark nationwide in connection with associated goods or services listed in the registration.
During the registration process, the examining attorney will evaluate the mark in several areas, including whether there is a prior registration or pending application for a confusingly similar mark, as the existence of the same mark or a confusingly similar one can prevent a new trademark from being registered, and whether the applied-for mark is descriptive in nature. A descriptive mark is one that describes a feature, quality, or characteristic of the goods or services sold under the mark. To be eligible for registration on the Principal Register, a mark must be inherently distinctive, rather than descriptive. An inherently distinctive mark provides a unique identifier for the source of the goods or services to consumers. For example, the mark Carvana for online auto sales is distinctive, in contrast with Autos.com.
1. Prima facie evidence of:
A valid, enforceable trademark,
Registrant's ownership of the trademark, and
An exclusive right to use and continuous use of the trademark in commerce;
2. Prevents the registration of a later filed trademark applications for conflicting marks;
3. Use of the registration symbol ® with the trademark, which provides constructive notice of the trademark to all potential infringers;
4. Priority of right to use the trademark throughout the US;
5. The ability to bar the importation of infringing goods through US Customs and Border Protection;
6. The use of the trademark to pursue foreign trademark registrations with foreign countries through the Madrid Protocol or under the Paris Convention;
7. The registration holder is allowed to bring a trademark infringement action in federal court rather than state court. Federal courts deal with fewer cases and are usually more adept at handling more complex issues;
8. Enhanced remedies, including enhanced treble damages in egregious cases, such as willful infringement.
Marks that are merely descriptive of the products or services they represent will face obstacles to registration on the Principal Register. If a mark is not inherently distinctive, it must have acquired distinctiveness through extensive use in commerce, which typically means the mark has become widely recognized by the public as identifying the source of the goods or services. The trademark act requires that there must actual evidence of acquired distinctiveness before a descriptive mark can be registered.
The Supplemental Register is a secondary option provided by the United States Patent and Trademark Office (USPTO) for descriptive marks that are presently in use in commerce, but not inherently distinctive. Unlike the Principal Register, where marks must be distinctive either inherently or through acquired secondary meaning, a supplemental register trademark is for those marks that have not yet achieved this level of distinctiveness. However, in the case of an intent to use application for a trademark that is not yet in use in commerce, the applicant cannot opt for the Supplemental Register. An intent to use application rejected on the basis that the mark is descriptive cannot be converted to the Supplemental Register and will lapse.
Marks on the Supplemental Register are descriptive of the goods or services, consist of descriptive geographic terms, or consist of surnames, and as such, cannot be registered as a principal registration without evidence of distinctiveness. Such marks may eventually achieve distinctive status on the Principal Register if they gain secondary meaning, evidenced by public recognition and exclusive use over a period of time. The trademark owner may seek registration on the principal register once acquired distinctiveness or secondary meaning of the mark is established.
While a supplemental registration does not offer all the protections of a federal trademark registration on the Principal Register, it still provides valuable benefits to trademark holders. A trademark examining attorney evaluates whether a mark descriptive during the examination process. If it is descriptive, the examiner may recommend that the applicant request transfer to the supplemental register. However, it should be noted that generic marks are not eligible for the supplemental register. The supplemental register has a number of benefits, but provides reduced protections relative to a principal registration.
1. Use of the registration symbol ® with the trademark;
2. The registration will be used by trademark examiners to bar future trademark registrations for any confusingly similar trademark to the mark on the Supplemental Register.;
3. The use of the trademark to pursue foreign trademark registrations with foreign countries through the Madrid Protocol or under the Paris Convention;
4. The registration will appear in the federal trademark database, making it easy to find by others, and will act as a deterrent to others filing marks which might be confusingly similar;
5. The registration holder is allowed to bring a trademark infringement action in federal court rather than state court. Federal courts deal with fewer cases and are usually more adept at handling more complex issues.
However, the protections afforded by a supplemental register trademark are more limited. For example, such marks cannot achieve incontestable status after five years of use, which is a significant benefit available to marks on the Principal Register. Moreover, they are not presumptively valid in legal proceedings, requiring the trademark owner to provide additional proof of the mark’s distinctiveness.
A Principal Registration of a mark is prima facie evidence of the exclusive right of the owner to use the mark, whereas a Supplemental Registration is not. While the owner of a supplemental registration can bring a suit for trademark infringement, Supplemental Register is not based on full protection of the federal trademark laws and it is based on "common law" trademark rights. These are rights that are not created by statutes but handed down from case law.
Unlike a principal registration, there is no presumption that a trademark on the Supplemental Register is distinctive of the applicant's goods and services. A supplemental registration also does not constitute a constructive use for priority proceedings. A trademark registered on the Principal Register automatically gains nationwide priority of use. This means the owner of a principal registration has the right to stop anyone from using the trademark in United States based on the trademark registration. Only those who used a competing mark before the filing of a trademark registration will have superior rights, and those rights will be limited geographically to where the mark was used prior to the trademark registration.
Supplemental Register marks do not gain the presumption of enforceability and ownership afforded to a principal registration. They only have superior rights based on the actual geographic use of the mark in commerce. Nationwide protection would only occur through the actual use of the mark in commerce throughout the nation. Additionally, a mark on the Supplemental Register can never gain incontestability status which is allowed for marks which have been on the principal register for at least five years. Once a mark gains incontestability status, the mark cannot be challenged or invalidated for certain reasons, such as being confusingly similar to another mark or that the mark is descriptive with respect to the goods or services involved. An incontestable mark can still be invalidated but those grounds are limited. They include whether the mark was obtained in a fraudulent manner; if the mark becomes generic for the good or services used (e.g. aspirin for acetaminophen); comprises scandalous, deceptive, or immoral matter; or any mark that disparages or falsely suggests a connection with any person.
A mark on the Principal Register is considered to put everyone on notice of the use of the mark in the United States, thereby eliminating any defense of good faith ignorance of the mark. A supplemental registration does not create that effect. This means that they will need to be actually notified to your use of the mark, by way of sending a cease and desist letter or other equivalent actions. Notice is extremely important with regard to the ability of the registrant to receive damages from the infringement of the mark. Recovery of profits and damages are only allowed if the acts by the infringer were committed with knowledge that such imitation of the mark is intended to be used to cause confusion, or cause mistake, or deceive. As stated above, knowledge is only imputed on the infringer by a mark on the Principal Register. If not, the infringer must be actually informed of the mark.
While the Supplemental Register does not create as many protections as the Principal Register, it is still worthwhile to register a mark on the Supplemental Register as you do gain those benefits listed above, and in five years, you can place the mark on the Principal Register thereby gaining all the benefits of a federal trademark.
After a mark has been registered on the Supplemental Register for five years, a trademark owner may decide to reapply for trademark registration on the Principal Register, provided that the necessary requirements are met. This process involves filing a new trademark application, as marks cannot be directly "amended" from the Supplemental Register to the Principal Register. The trademark owner must submit evidence to establish acquired distinctiveness, demonstrating that the mark now functions as a source identifier in the minds of consumers.
One of the key pieces of evidence for establishing acquired distinctiveness is the continuous and substantially exclusive use of the mark for at least five years. However, while five years of use is a strong indicator that a mark may have acquired distinctiveness or secondary meaning, it is not always sufficient on its own. The U.S. Patent and Trademark Office (USPTO) may require additional evidence, such as consumer surveys, advertising expenditures, or declarations from consumers or experts, to fully establish that the mark has indeed acquired secondary meaning.
When reapplying, the new trademark application is separate and distinct from the supplemental registration with a new priority date. This means that the original filing date of the mark on the Supplemental Register will not carry over to the Principal Register application. Successfully moving a mark from the Supplemental Register to the Principal Register enhances the legal protections available to the trademark owner and solidifies the mark’s status as a valuable business asset.
Trademark owners should consult with an experienced trademark attorney to determine the best course of action for their specific situation. Experienced trademark attorneys can help you avoid the potential pitfalls of selecting highly descriptive trademarks, conflicting with prior registrations, and infringement issues. The attorneys at Sierra IP Law, PC have decades of experience in handling trademarks. Contact our office for a free consultation.
There are myriad concerns that need to be addressed in the creation and operation of a business. However, we find that the majority of businesses that come to us for assistance have not given intellectual property (IP) its due consideration. The owners and operators often have limited understanding of IP and its value. However, significant value can be lost if a business does not address the ownership of intellectual property (for example, inventions and patents) created by its employees. The business must protect its technology, know-how, and proprietary information through written contracts with each employee. In such an agreement, the employer can protect the company's intellectual property, confidential information, and control potential developments by the employee that result from the employee's training and involvement in the business.
Under US patent law, the default rule is that the inventor is the owner of the invention. Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000). In the absence of an employee assignment, the employer has a nonexclusive license to use an invention devised by an employee while working for the employer. In other words, the employee owns the invention, and the employer has a nonexclusive license to use it without paying royalties to the employee. The employer's right to use such inventions is called a "shop right". Mechmetals Corp. v. Telex Computer Products, Inc., 709 F. 2d 1287 (9th Circuit 1983). The employer has no further patent rights in this scenario. In contrast, the employee has the right to exploit the invention by selling or licensing it to other users, or starting a competing business. An invention assignment agreement can be used to control the ownership of inventions and other IP that relate to the business or that are created using the employer's resources.
Why is this important? Consider a scenario in which a company trains an employee to be highly skilled in a particular technology and discloses the company's business plans and trade secrets to the employee to enable the employee to develop high value products and services for the company. The employee then develops a product that is relevant to the company's business, but was not developed as part of the employee's tasks or job description and was created on the employee's own time. If there is no IP assignment clause in place for that employee, the employee would retain any patent rights in the product and could leave the company and start their own business selling the product that the employee invented.
In order to control against these scenarios, a company should have practices in place to establish employee agreements that require employees to assign any inventions and other intellectual property that they create using company resources or that is related to the company's business operations and plans. Such agreements may be a standalone agreement or may be a provision within an employment contract that states the conditions under which an employee-inventor’s invention rights or other IP rights are assigned or granted to the employer. Ideally, the agreement should be executed at the time the employment relationship begins. However, a later agreement can be made, but consideration (compensation) will likely have be paid by the company to the employee for the agreement to be valid and enforceable.
In California, the ownership of employee inventions and other IP is governed by a combination of statutory provisions and case law, which together provide a framework for determining rights and obligations. The relevant provisions of the California Labor Code are sections 2860, 2870, 2871, and 2872.
Section 2860 establishes the general principle that anything an employee acquires by virtue of their employment, other than the compensation due to them, belongs to the employer (Cal Lab Code § 2860). This broad provision has been interpreted by the courts to stand for the principle that when an employee is hired to invent, any invention an employee creates during their employment that is related to their job automatically becomes the property of the employer, including the patent rights. Gen. Elec. Co. v. Wilkins, 2012 WL 3778865 (E.D. Cal. Aug. 31, 2012). However, this principle is subject to several important exceptions and conditions, as provided in Section 2870.
Section 2870 introduces a significant limitation to the broad ownership rights granted by section 2860. It provides that an employment contract that purports to assign patent rights or other rights in an invention developed entirely on the employee’s own time without using the employer's equipment, supplies, facilities, or trade secret information is the employee's property, provided that the invention does not relate to the employer’s business or actual or demonstrably anticipated research or development, or does not result from any work performed by the employee for the employer is against public policy and is therefore invalid (Cal Lab Code § 2870).
Section 2871 complements section 2870 by prohibiting employers from requiring employees to agree to terms that are void and unenforceable under section 2870 as a condition of employment. This section also clarifies that employers can require disclosure of all inventions made during employment and establish a review process to determine ownership (Cal Lab Code § 2871).
Section 2872 requires employers to notify employees in writing if their employment agreements include provisions that require them to assign their rights to inventions, ensuring that employees are aware of their rights under section 2870. In disputes over the applicability of section 2870, the burden of proof rests on the employee (Cal Lab Code § 2872).
The statutory framework is further shaped by California case law, which has addressed various aspects of invention ownership.
In Goodyear Tire & Rubber Co. v. Miller, the court held that when an employee is specifically hired to invent or if their job involves developing new processes or products, the inventions developed in the course of their employment belong to the employer. This principle reinforces the employer’s ownership rights under section 2860, especially in cases where the employee’s role directly involves innovation.
However, in cases where the employment agreement is less clear, courts have applied a more nuanced approach. For instance, in Aero Bolt & Screw Co. v. Iaia, the court ruled that even if an invention is developed during employment, the employer may not automatically own it unless there is an express agreement assigning the invention to the employer. This decision highlights the importance of clear contractual terms defining ownership rights in an employee agreement.
In the Mattel, Inc. v. MGA Entertainment, Inc. case, a significant federal case applying California law, the Ninth Circuit held that even an employee’s “ideas” could be subject to assignment if they were conceived during employment, even if not fully developed. This ruling underscores the potential breadth of employer ownership rights under California law and the critical role of employment agreements in defining the scope of these rights.
The situation becomes more clear cut when dealing with an independent contractor (IC). Unlike employees, ICs are generally presumed to own the IP they create, unless there is a written agreement specifying otherwise. Generally, the ownership of intellectual property rights, including inventions, must be defined in a written contract with the IC.
However, when ICs create inventions using the hiring party’s resources or within the scope of their contracted work, the hiring party may assert ownership under the theory of “shop rights”.
Companies that are developing new product designs, manufacturing processes, and technologies should take several practical steps to protect their respective interests:
Employers should ensure that employment contracts explicitly address the ownership of inventions, including clauses that define the scope of work and the ownership of any resulting IP. Employee proprietary information and invention assignment agreements are typically required during the onboarding process to ensure confidentiality and ownership of inventions, copyrights, and other intellectual property. The agreements should include assignment clauses in employee agreements signed at the time of hiring. Businesses should also include assignment clauses in independent contractor agreements that transfer IP rights created in the work performed by the independent contractor.
Employers must comply with section 2872 by providing written notifications to employees about their rights under section 2870, ensuring that employees are fully informed of their rights and obligations.
If there are existing employees that are working in research and development or product development and have not yet been asked to sign an employment contract that includes an assignment clause, an IAA should be prepared and signed to clearly delineate the rights of both parties concerning inventions. These agreements should comply with California law and avoid overreaching provisions that could be deemed void under section 2870. In such cases, consideration in the form of payment or other value should be provided in exchange for the employee's agreement to transfer their rights to inventions.
When engaging ICs, hiring parties should use detailed agreements that specify ownership of any inventions created during the engagement. These agreements should explicitly state the intent of the parties regarding IP ownership.
Both employers and employees should document the development process of any invention, including the resources used and the time of development. This documentation can be crucial in resolving disputes over ownership.
Given the complexity of IP ownership issues, both parties should seek legal advice when drafting or reviewing contracts related to employment or independent contractor relationships. Legal counsel can help ensure that the agreements comply with California law and effectively protect the interests of both parties.
The ownership of inventions developed by employees and ICs in California is governed by a combination of statutory provisions and case law that together create a complex legal framework. To properly control the ownership of patents and other intellectual property rights, employers must consider who performing work for them (employees and/or ICs), the limitations on assignment requirements provided under sections 2870-2872, and ideally have a written contract signed that addresses IP ownership at the time the employee or IC is initially engaged.
Given the potential for disputes, it is essential for all parties involved in the creation of IP to have clear, well-drafted agreements that address the ownership of inventions. As the legal landscape continues to evolve, staying informed of the latest developments in intellectual property matters is essential to maximize the value of an enterprise in California or any state.
If you are an employer with questions about your legal rights to an invention or an employee with questions about obligations to your employer for an invention, discussing the matter with an intellectual property attorney would be worth your time. If you have not yet considered this issue, a review of your employment agreements for assignment provisions addressing inventions or other intellectual property is warranted.
The attorneys at Sierra IP Law are experienced in dealing with employee and IC invention matters. Contact our offices for a free consultation.
All issued patents are presumed valid, and the burden of proving invalidity rests on the party challenging the patent. A patent shall be presumed valid, and each claim shall be presumed valid independently of other claims under 35 U.S.C. § 282. This presumption applies to all claims within a patent, irrespective of whether they are independent or dependent, ensuring that each claim stands on its own in terms of validity. Dependent or multiple dependent claims shall be presumed valid even if dependent on an invalid claim. In a legal action involving infringement of a patent, the burden of establishing invalidity of a patent or any claim thereof belongs to the party asserting invalidity, which must demonstrate invalidity by clear and convincing evidence.
Patent invalidation can occur on several grounds, each of which challenges the legitimacy of the patent's claims to novelty, non-obviousness, or compliance with statutory requirements.
First, a patent can be invalidated if it is shown that the invention was not novel or non-obvious at the time of filing. Novelty requires that the invention must be entirely new and not previously disclosed by any prior art. Non-obviousness means that the invention must not be an obvious improvement or modification of existing knowledge to someone skilled in the relevant field. If prior art demonstrates that the invention lacks novelty or would have been obvious, the patent can be declared invalid.
Additionally, the patent claims, which define the scope of the invention, must be clear, concise, and fully supported by the patent specification. The specification should provide a detailed description of the invention, enabling someone skilled in the art to understand and practice it. If the claims are vague, overly broad, or not sufficiently backed by the specification, the patent can be challenged and invalidated.
Another ground for invalidation is the failure of the patent owner to disclose the best mode of practicing the invention. The best mode requirement mandates that the inventor must reveal the most effective way to carry out the invention at the time of filing. If it can be proven that the inventor knowingly withheld this information, the patent can be invalidated.
There are also bases of invalidation for failure to adhere to procedural rules, such as filing deadlines, and providing truthful and complete information during prosecution. Any failure to meet these regulatory requirements can result in the patent being invalidated, as the integrity of the patenting process depends on strict adherence to these standards.
Each of the foregoing grounds serves to ensure that only deserving inventions receive and maintain patent protection. Invalidity can be asserted as a defense in patent litigation or through administrative proceedings before the Patent Trial and Appeal Board (PTAB), the administrative tribunal of the United States Patent and Trademark Office (USPTO).
The standard of proof required to overturn this presumption is "clear and convincing evidence" (the "CCE Standard"). This high standard, established through judicial precedent, underscores the difficulty challengers face when attempting to invalidate a patent. The U.S. Supreme Court, in cases like Microsoft Corp. v. i4i Ltd. Partnership, affirmed this standard. Proving invalidity based on prior art that was already considered by the United States Patent and Trademark Office during examination presents a significant challenge due to the presumption under US patent law that the issued patent is valid. While the standard of proof remains CCE standard, courts typically afford less weight to prior art that the examiner previously reviewed. This heightened deference to the USPTO's expertise means challengers must present compelling arguments or additional evidence to convince the court that the examiner's decision was erroneous, making it more difficult to invalidate the patent under these circumstances.
While the presumption of validity is robust, it is not absolute. It is rebuttable, meaning that a challenger can invalidate a patent that fails to meet one or more of the statutory requirements, such as novelty, non-obviousness, or adequate disclosure. When a defendant raises an invalidity defense against federal claims of patent infringement, invalidity must be demonstrated by evidence that is clear and convincing. This standard is higher than the "preponderance of the evidence" standard used in most civil law matters but lower than the "beyond a reasonable doubt" standard applied in criminal cases. The CCE Standard requires a strong belief in the truth of the evidence presented but does not require absolute certainty.
One notable case illustrating the rebuttal of the presumption of validity is Sciele Pharma Inc. v. Lupin Ltd. The United States Court of Appeals for the Federal Circuit held that the presumption could be rebutted even when the prior art had been considered by the USPTO during prosecution. The court emphasized that the same obviousness analysis applies to issued patent claims, even where the prior art had been considered by the patent office. However, the challenging party must demonstrate invalidity with evidence that is clear and convincing. Such demonstration must address why the prior art references already considered by the USPTO render the claim clearly obvious in contradiction to the position taken by the USPTO during examination. In this manner, the weight of such evidence might be diminished because the USPTO had already presented a position of non-obviousness of the claims. To wit, when a defendant is challenging a patent based on prior art cited during examination of the patent, the defendant has to essentially demonstrate material failure by the USPTO in its analysis. Conversely, if the USPTO did not have notice of the prior patents or other relevant prior art presented in the invalidity challenge, the burden is somewhat reduced because there is no countervailing USPTO opinion that the claims are patentable over the unconsidered prior art. The CCE standard remains intact, demonstrating the high burden placed on challengers to have a issued patent held invalid.
There is good reason for the enhanced standard of proof to demonstrate that a patented invention is, in fact, unpatentable. The patent office is a federal agency that employs engineers, attorneys, and various professionals in all technical fields as patent examiners to bring their expertise to bear on whether a claimed invention is patentable. The patent applications filed with the USPTO go through a rigorous examination process by these technical professionals prior to the issuance of any granted patents.
The patent application process serves as a crucial vetting mechanism to prevent the issuance of undeserving patents. This process begins when inventors submit their patent applications, fully disclosing the invention in such terms that are clear and complete enough for a person skilled in the relevant field to understand and practice the disclosed invention. It is the USPTO's task to analyze submitted patent applications for adherence to the formal disclosure requirements and to find prior art relevant to the invention. The examiner conducts a patent search through patent databases covering publications of US and international patent offices. The examiner may also search non-patent databases and sources for other types of publications and disclosures, such as scientific and technical journals. US patents, foreign patents, and other forms of prior art that pre-date the effective date of the patent application (the effective filing date) are analyzed to determine whether the same invention or similar technologies have already been disclosed to the public. If such prior art is found, it is the USPTO's job to reject the application and explain why the claims in the patent applications lack novelty and/or are obviousness in view of the prior art. The USPTO issues office actions, formal communications that outline concerns or reasons for rejection. The applicant must respond to these office actions by addressing the issues raised, often involving amending claims or providing additional arguments to demonstrate that the invention is indeed novel and inventive.
The importance of this process lies in its ability to uphold the integrity of intellectual property rights provided by a patent. The examination process is a due diligence determination that is supposed to ensure that only truly novel and non-obvious inventions are patented. This careful examination is intended to maintain a fair and competitive environment for innovation. The search results generated during this process establish a record of the prior art considered during the examination process, which is crucial in later litigation proceeding, particularly where invalidity is asserted.
Prior art refers to existing knowledge, publications, patents, or any public disclosures that predate the effective date of a patent application. During patent examination, relevant prior art is sought and considered in determining whether an invention is novel and non-obvious. The patent examiner reviews the relevant prior art to assess whether the invention is patentable or if it has already been disclosed or would have been obvious to person of ordinary skill in the relevant field.
In cases where prior art was considered during the examination, its impact on patent invalidity defenses can be significant. When a patent is later challenged in litigation, the court requires that any invalidity claims based on the same prior art must be supported by CCE Standard in view of the USPTO's prior consideration thereof. In an action involving prior art previously considered by the USPTO, such an action must demonstrate that the examiner made an error or overlooked critical details. Therefore, it is difficult to make a case for invalidity based on prior art considered during patent examination, particularly if the prior art is specifically discussed during examination by the examiner.
A patent is invalid only if it does not satisfy specific legal requirements, including novelty, non-obviousness, and appropriate disclosure. Patent invalidation gives interested parties the power to defend their rights to use a technology that was already known to the public and oppose unfair grants of exclusivity to a patentee. The party asserting invalidity must give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial. Such notice must include the bases for the invalidity challenge and the name and address of any person who may be relied upon as the prior inventor or having prior knowledge. Alternatively, a patent can be challenged through administrative procedures through the USPTO.
The patent ex parte re-examination process is a post-grant procedure that allows the USPTO to reconsider the validity of an issued patent. This process can be initiated by the patent owner or a third party, often due to concerns about prior art that was not adequately considered during the original examination. Ex parte re-examination is carried out through the USPTO by an examiner, who reviews the request for re-examination by the patent owner or third party. The request must present a substantially new question of patentability in order to justify initiation of the re-exam process. Unconsidered prior art is a common basis for a request.
During re-examination, the examiner determines whether the claims of the patent are still valid based on the newly cited prior art or other issues raised. The re-examination process is not adversarial and provides a streamlined, lower-cost option to challenge validity.
If the USPTO finds that the new evidence invalidates the claims, the patentee is given the opportunity to amend the claims and/or present arguments for patentability. Conversely, if the USPTO confirms the claims, the patent emerges stronger, with reaffirmed validity. However, ex parte re-examination is not a favorable option for challenging validity base on prior art that was considered during examination. Inter-partes review before the PTAB provides a more favorable option for challenging a patent based the prior art considered in the patent application process.
The America Invents Act (AIA), enacted in 2011, introduced significant changes to the U.S. patent law, including the establishment of the Patent Trial and Appeal Board (PTAB). One of the critical effects of the AIA has been on the presumption of validity in post-grant proceedings. Notably, in Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings, the presumption does not apply. This shift has had profound implications for patent holders, as the PTAB has invalidated patents under this new framework at a high rate.
These proceedings allow any party, regardless of being sued for infringement, to petition PTAB to invalidate issued patents. IPR and PGR are advantageous for challengers due to their faster, less expensive process, and lower burden of proof compared to judicial proceedings. PTAB was created to improve patent quality, reduce litigation costs, and combat "patent troll" lawsuits.
Because patents are not presumed valid in PTAB proceedings, concerns have been raised about the PTAB procedure and its impact on the patent system. PTAB has faced criticism for creating uncertainty in patent rights and stifling innovation, leading to calls for reform. A high rate of patent invalidation has led to questions about the patent review process at the PTAB or whether the examination should be deferred until enforcement is likely. These discussions suggest that the traditional presumption of validity may be losing some of its protective power, at least in certain contexts.
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