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.
A common law trademark is established through the actual use of a mark in commerce rather than by formal federal trademark registration through United States Patent and Trademark Office. In other words, common law trademark rights are established by opening a business and providing goods and services to consumers under a business name or brand - e.g., opening a donut shop called Dawn's Donuts and selling donuts to customers. Business names, logos, and phrases that are regularly used can be considered common law trademarks. In the United States, common law trademark rights are acquired by being the first to use the mark in connection with goods or services in a particular geographic area. These are unregistered trademarks that still carry rights recognized by the state and federal courts and can be enforced against others who subsequently use a confusingly similar mark in the same area.
To establish common law trademark rights, you must use the trademark in commerce. This process begins when a business or individual uses a distinctive mark to identify their goods or services and distinguish them from those of others. The key factors in establishing these rights are distinctiveness, use, and recognition in the marketplace.
The mark must be actively used in the sale or advertising of goods or services. This use must be bona fide and not merely token or for the purpose of reserving a right in the mark. Proof of use, such as sales receipts, advertisements, and other business documents, can support a claim of common law rights. Common law trademarks underscore the principle that trademark rights arise from actual use, not merely from registration.
Recognition in the marketplace is also crucial. The mark must become associated with the goods or services in the minds of consumers in the area where it is used. Distinctiveness means the mark must be unique enough to identify the source of the goods or services. Offering a common service with a bland name, rather than a brand name, is not distinctive and will not garner consumer recognition. For example, if you open a mechanic shop called Downtown Mechanics, your mark will not establish strong consumer recognition or strong trademark rights. However, if you name a fun name like Grease Monkeys, it will be much more memorable and distinct in the mind of the consumer. In order to have enforceable trademark rights, the mark must be distinctive.
Generic terms and descriptive terms should be avoided because they provide little to no trademark rights. For example, if you name your bakery "pastry shop", the name describes exactly the business services, and is thus generic. A name like Tasty Bakery would be considered descriptive because "tasty" is descriptive of the pastry offerings in the bakery.
If the foregoing requirements are satisfied, the user of the trademark can claim common law trademark rights, which provide legal grounds to prevent others from using confusingly similar marks within the same geographic area where the trademark is used, thus protecting the goodwill and reputation associated with the mark.
Exclusive Use in the Geographic Area: Common law trademark rights grant the holder exclusive rights to use the mark within the geographic area where the trademark is being used and has acquired distinctiveness amongst consumers. This means the trademark holder can prevent others from using a confusingly similar mark within that specific market area.
Right to Prevent Confusion: The trademark owner can prevent others from using a trademark or service mark that is likely to cause confusion among consumers as to the source of the goods or services. This protection helps maintain the trademark's goodwill and ensures that customers are not misled.
Right to Bring Infringement Claims: Common law trademark owners can bring infringement claims under state law. Many states have statutes and common law principles that provide remedies for trademark infringement, including injunctions, damages, and sometimes attorney's fees. The specific remedies available depend on the state's laws.
Federal Lanham Act Claims: While common law rights are primarily protected under state law, trademark holders can also bring claims under the federal Lanham Act. Section 43(a) of the Lanham Act provides a cause of action for false designation of origin, which can be used to address unfair competition and infringement of unregistered marks. This federal cause of action allows common law trademark owners to seek relief in federal court, providing broader enforcement options.
Unfair Competition Claims: Common law trademark rights can be the basis for bringing unfair competition claims because they protect the goodwill associated with a trademark used in commerce. If another party uses a confusingly similar mark, it can mislead consumers and harm the original trademark holder's reputation and business. Such unauthorized use can be considered unfair competition, as it takes advantage of the established market presence and consumer recognition of the original mark.
A common law trademark has limitations and disadvantages in comparison to a federally registered trademark. Unlike federally registered marks, unregistered marks do not provide nationwide protection or the benefits associated with federal registration, such as a presumption of validity and the potential to recover treble damages and attorney's fees. These limitations can significantly affect the scope and enforceability of trademark rights.
Limited Geographic Scope: One of the primary disadvantages of common law trademarks is their limited geographic scope. Common law rights are generally confined to the area where the mark has been used and gained recognition. This means the trademark holder does not have exclusive rights to the mark outside of this area. In contrast, federally registered marks grant nationwide protection, allowing the owner to enforce their rights across the entire United States, regardless of the specific areas of use.
Lack of Presumptive Rights: A federally registered marks provide presumptive evidence of the trademark's validity, ownership, and the exclusive right to use the mark in commerce on a national scale. This presumption can be crucial in legal disputes, making it easier for the trademark owner to prove their case. Common law trademarks do not offer these presumptions, requiring the owner to provide more extensive evidence of their rights and the mark's distinctiveness and market presence.
Reduced Enforcement Mechanisms: Enforcing common law trademark rights can be more challenging and costly. While a common law trademark holder can bring infringement actions under state laws and unfair competition claims under the Lanham Act, they are not able to bring trademark infringement claims under 15 U.S.C. § 1114, claims for statutory damages for counterfeiting, claims for enhanced damages for Willful Infringement, or dilution claims without a federal registration. Federal trademarks provide these enforcement mechanisms to trademark owners and provide an advantage over common law trademark holders.
Notice and Deterrence: Federal registration places the trademark in the official records of the US Patent and Trademark Office, providing constructive notice to others of the mark's existence. This can deter potential infringers who conduct trademark searches before adopting a new mark. Common law trademarks do not benefit from this official notice, making it more likely that others might inadvertently use a similar mark, leading to potential conflicts.
Incontestable Trademark Registration: An incontestable trademark registration is a federal trademark that has been registered and continuously used in commerce for at least five years with no adverse decisions or pending legal challenges to the owner's trademark rights. Incontestable status provides conclusive evidence of the trademark's validity, the registrant’s ownership, and the exclusive right to use the mark in commerce. This makes it significantly easier for the owner to enforce their rights in legal proceedings and avoid challenges to their rights. An incontestable trademark can only be challenged on very limited grounds, such as the mark becoming generic, fraud in obtaining the registration, or abandonment. This provides a strong defense against attempts to cancel the trademark, offering greater security and stability for the owner of an incontestable federal trademark.
Use of the ® Symbol and Constructive Notice: The Lanham Act permits only federally registered trademarks to use the registered trademark symbol ®. This symbol provides public notice of the registration and can act as a deterrent against infringement. Common law trademarks can use "TM" or "SM," but these symbols do not result in the constructive nationwide notice that the registered trademark symbol provides. Using the ® symbol provides the owner of the trademark nationwide notice of their rights. Constructive notice is a legal concept under which all persons in the US are deemed to be on notice of the federal when the symbol is applied to the registered goods or on the promotional materials for the registered goods or services (e.g., website, advertisements, product/service literature, etc.). The ® symbol should be displayed prominently alongside the registered trademark, typically in the upper right-hand corner, lower right-hand corner, or immediately following the mark. Constructive notice eliminates the defense of "innocent infringement." An alleged infringer cannot claim that they were unaware of the trademark existence or its registration status and may be liable for damages from the point of their initial use of the trademark.
Federally registered trademarks can serve as a basis for seeking foreign trademark registrations in other countries under international treaties, such as the Madrid Protocol. Common law trademarks do not offer this advantage, making it more difficult and expensive to secure international trademark protection.
Common law trademarks offer certain protections, but they are inferior to the rights provided by a federal registrations, which provide broader, more robust, and more easily enforceable rights that can be crucial for maintaining and defending a brand. A state trademark registration may also be available through the state's Secretary of State's office. However, state trademark registrations typically have significantly fewer protections than a federal registrations, and they do not have nationwide reach.
It should be noted that a federal trademark application cannot be submitted for some unregistered trademarks. There are specific criteria and requirements that must be met in order to register your trademark. The primary reasons why a common law mark may not qualify for federal registration:
To be eligible for federal registration, a trademark must be used in interstate commerce, meaning it must be used in connection with goods or services that are sold, transported, or promoted across state lines or that otherwise have an impact on interstate commerce. This is a requirement because the constitutional authority for the USPTO to issue trademark registrations is based on the federal government power to regulate commerce between the states. This use in commerce requirement is not black and white. There is quite a bit of nuance in this interpretation of this requirement. For example, a restaurant located in one state only operates in that state. However, if is located on the interstate highway, for example, it likely serves many interstate travelers and "affects" interstate commerce. Such a restaurant would likely be able to properly file a federal trademark application to register its name.
Generic Marks: Marks that are generic and directly describe the product or service itself cannot be registered.
Descriptive Marks: Marks that are merely descriptive of the goods or services are also generally not registrable unless they have acquired secondary meaning. For example, "CREAMY" for yogurt would be considered descriptive and not inherently distinctive.
Immoral or scandalous marks that consist of immoral, deceptive, or scandalous matter, or that disparage individuals or groups, are not registrable. Although this criterion has been subject to legal challenges, it remains a consideration for the USPTO.
If your mark is eligible, you should register your trademark with the United States Patent and Trademark Office. The benefits of a federal trademark registration far exceed the costs of obtaining and maintaining the registration. If your business is successful, you want exclusive rights in your business name and/or brand name. The exclusivity provides strength to the brand and allows your to build your reputation with your customers without consumer confusion with copycat brands or competitors.
The process of pursuing a trademark registration should begin with finding an experienced trademark attorney. Many attorneys are willing to file federal trademark applications because it is an apparently simple process. However, the skill is not applied in the filling of federal application forms. The experienced trademark attorney conducts due diligence in advance of the application to determine the strength of the mark, potential infringement issues, and whether there are any potential infringers. A trademark search is essential for this process. The trademark search should include an examination of both the federal register (the database of registered marks) and unregistered use of similar marks (a common law trademark search). The common law trademark search is a complicated process that requires the skill and expertise of experienced professionals. The trademark search is the foundation on which your trademark protection is built and it should not be taken lightly. Ideally the search is conducted before you adopt and commit to a mark.
Once the search is complete, the trademark attorney will assist with the proper filing of the trademark application, making sure that a proper specimen is filed, that the goods or services are properly identified, that the filing strategy for the mark or marks is optimized, and that all formalities are observed. These steps are critical to successfully file applications to register your trademark.
If you are able to properly pursue a trademark registration you should. A common law trademark carries some enforceable rights and protections, but they are inferior to those of a trademark registration. If you are planning to start a business or brand, you should contact an attorney that specializes in this area of intellectual property law. They can help you with selecting a proper mark that can be an asset to your business on which you build your reputation and relationship with consumers. You do not want the mark you initially select to become a liability. Facing infringement claims and/or having to involuntarily change your mark down the road can be a major disruption.
A trademark is a symbol, word or phrase, graphical design, sound, color, video clip, or a combination thereof that distinguishes your products or services from those offered by others. A trademark serves to uniquely identify your brand for the benefit of your customers. A trademark is a type of intellectual property (IP) that identifies a business or product. A trademark registration protects and expands your exclusive rights in your trademark. The process of applying for a trademark involves understanding who is eligible to file an application. This article delves into the various types of applicants and entities that can properly apply for trademark registration through the United States Patent and Trademark Office (USPTO).
Various forms of businesses can own a trademark and apply for a trademark registration, including individuals, partnerships, corporations, limited liability companies (LLCs), clubs, trusts, and non-profits. However, there are other requirements that must be met in order to be a proper applicant for a trademark registration, as discussed below.
According to 15 U.S.C. § 1051(a)(1) and (b)(1), an application to register a mark must be filed by the owner of the trademark under two filing options: actual use and intended use applications. Trademark rights can be established through actual use in commerce prior to filing a trademark application. This involves using the mark on goods or services in a manner that distinguishes them from those offered by others, thereby creating a connection in the minds of consumers between the mark and the source of the goods or services. A business can establish rights through continuous and consistent use of the mark, which builds the recognition and goodwill in the mark and the business. However, relying on common law trademark rights can be problematic because these rights are limited to the geographic area where the mark is actually used, which can restrict the owner's ability to enforce the trademark in other areas. Additionally, common law rights offer less legal protection compared to a registered trademark, making it more challenging to prevent others from using a similar mark. The lack of a formal registration also means the owner must prove the existence and scope of their rights in any legal disputes, which can be both time-consuming and costly. Finally, common law rights do not provide the benefits of federal registration, which provides several advantages over common law trademark rights, including a legal presumption of ownership and nationwide notice of your trademark rights.
If a business or entrepreneur wishes to secure rights in a trademark, but has not yet begun using the mark in connection with any goods or services, an application may still be filed if certain conditions are met. An intent-to-use application may be filed if the applicant has a bona fide intention to use the mark in commerce. This means that the applicant has genuine plans to use the mark in connection with their goods or services in the near future. This intent must be real and not merely a token gesture to reserve the mark. Evidence of such intent might include business plans, marketing preparations, or product development efforts that demonstrate a serious intention to bring the mark into commercial use. The requirement ensures that the trademark system is not clogged with marks that applicants do not intend to use, maintaining the integrity of the trademark registry.
If an applicant is improperly identified in a trademark application, the application may be deemed void ab initio, meaning it is invalid from the outset. This can occur if the application is filed by a person or entity that does not have the legal right to claim ownership of the mark, such as someone who is not the actual trademark owner or lacks a bona fide intent to use the mark in commerce. It cannot be amended to correct the applicant because the applicant has no transferable rights in the application. See 37 C.F.R. § 2.71(d). Because an improperly identified applicant cannot simply amend the application to correct the error, a new application must be filed resulting in the loss of the original filing date. This delay can potentially lead to the loss of priority if another party files for the same or a similar mark in the interim. Also, the applicant faces the additional costs associated with refiling and the potential for increased legal complications.
A proper trademark application and the resulting registration allows a trademark owner to sue for trademark infringement in state or federal court. Trademark ownership also secures the owner's trademark rights on a nationwide basis. Thus, correctly filing a trademark application with the correct applicant is critical to the health of your brand.
Under US trademark law, applicants for trademark registration can be natural persons or juristic entities. Juristic entities include partnerships, joint ventures, associations, unions, corporations, and other organizations capable of suing and being sued in court. See 15 U.S.C § 1127. An application for a trademark registration cannot be filed under a subunit of a corporation or under a fictitious business name (a "DBA") because they are not legal entities that can sue or be sued.
Organizations and juristic entities can file trademark applications to secure trademark registration and protect their intellectual property rights. Various types of business entities are eligible to apply, each with particular requirements:
Countries, states, cities, and other related types of governmental bodies can apply to register marks with some restrictions. Governmental bodies can seek a trademark registration to protect their unique identifiers, logos, and names from unauthorized use, ensuring that the public can trust the source and quality of the services or goods associated with them. This protection helps maintain the integrity and reputation of governmental programs and initiatives. For a governmental body to file a trademark application, it must be the trademark owner and it operate under governmental authorization. The application must specify the governmental entity's legal status, such as "an agency of the United States" or "a municipal corporation organized under the laws of [state]."
Two famous examples of trademarks registered to the US government:
It is worth noting that Section 2(b) of the Lanham Act prohibits the registration of any mark that consists of or comprises the flag, coat of arms, or other insignia of the United States, any state, municipality, or any foreign nation, or any simulation thereof. For example, the U.S. flag cannot be registered as a trademark. In the case In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012), the Trademark Trial and Appeal Board (TTAB) affirmed the PTO's refusal to register the official seal of the District of Columbia. The refusal was based on the ground that the seal, intended for use on various goods such as clocks, cufflinks, memo pads, pens, pencils, cups, mugs, and clothing, constituted a governmental insignia barred from registration under Section 2(b). The decision confirmed that the District of Columbia qualifies as a “municipality” under the statute, and there was no dispute that the applied-for mark was the official seal of D.C.
Federal trademark law may allow a minor to file an application, depending on law of the state of the minor's residence. If a minor can lawfully form contracts and can participate in legal proceedings in the state of their domicile, the minor can file a trademark application in their own name. If not, the application must (1) be filed in the name of a parent or legal guardian and (2) indicate their status as parent or legal guardian of the minor. If the named applicant is a minor, the examining attorney must investigate whether the minor qualifies as a proper applicant under the applicable trademark law.
A licensed trademark attorney can file a trademark application on behalf of a client who is a proper trademark applicant by following specific procedures and requirements set forth by the United States Patent and Trademark Office (USPTO). First, the attorney must engage the client and get a power of attorney from the client to file the trademark application. The attorney must then meet and confer with the client to gather the necessary information.
As initial step, the attorney must ensure that the client qualifies as a proper trademark applicant, as outlined above. The attorney also gathers other essential information from the client, such as the applicant's legal name, entity type, and address. The attorney also needs details about the trademark, including the mark itself, a clear description of the goods and services associated with the mark, and the basis for filing (e.g., current use in commerce or intent to use).
Throughout the entire process, the attorney communicates with the USPTO, responds to office actions, and ensures all legal requirements are met. This professional guidance helps streamline the application process and increases the likelihood of successful trademark registration, safeguarding the client's intellectual property rights.
Today, trademark applications are filed through the Trademark Electronic Application System (TEAS), which provides a streamlined submission process and an efficient trademarking process. The application must properly identify not only the applicant, but also the trademark or service mark and the goods or services. There are 45 different trademark classes, and you can register your mark in multiple classes if necessary. Your goods and services may fall into different trademark classes, and the correct classification for your goods or services should be determined prior to filing in order to avoid rejections and delays in the trademark examination process. Each trademark class in the application carries filing fees of $350.
Once the application is filed, you have established a priority date and effective date for your exclusive right to the trademark, assuming that you are the earliest adopter and exclusive user of the mark in connection with your goods and/or services at the time of filing. It is worth noting here that due diligence should be conducted before filing the trademark application to determine whether there are any third party rights in the same or similar mark that may impact your rights. A thorough trademark search of trademark filings with the USPTO and existing unregistered trademark use should be conducted before filing a trademark application to ensure your mark is unique and that you have substantially exclusive rights in your mark.
Once your trademark application is filed, you will receive a filing receipt and you will have established a public record of your claim to trademark rights. The filing date establishes your rights nationwide to your trademark filing, assuming that your mark is registrable and there is no confusingly similar use of the mark at the time the application is filed. This nationwide protection of your mark provides continuing protection as your business grows and expands geographically.
The trademark application process typically takes several months to a year or more to complete. The application will be in a queue at the US Patent and Trademark Office for several months before a trademark examiner begins to examine the application. The trademark examiner will review your application to ensure it meets the requirements for registration. The examiner assesses whether the mark is distinctive and not merely descriptive of the goods or services. The goods or services identified in the application must be clearly defined and associated with the mark. Additionally, the examiner checks for any likelihood of confusion with existing trademark filings, ensuring the new mark would not create consumer confusion with previously filed or registered marks. Compliance with trademark law also involves verifying that the mark is not deceptive, scandalous, or falsely suggests a connection with persons, institutions, or beliefs. Meeting these legal requirements helps ensure the trademark is entitled to protection under trademark law. If the examiner identifies any deficiencies, likelihood of confusion, or other issues with the application, they will issue an office action. You may receive one or more office actions, which is a letter from the Patent and Trademark Office requesting additional information, clarification, and/or amendments, and may contain refusals of the application due to a failure to comply with the requirements discussed above. An example scenario for issues raised in an office action for the hypothetical mark "Legal Maestro" for use on legal services could include the following:
These issues would need to be addressed adequately to overcome the office action and proceed with the trademark registration process. A response to an office action may be filed in order to address the issues raised by the trademark examiner. The response may include amendments to the goods or services, arguments against an examiner's assertion that there is a likelihood of confusion with prior filing, and/or responses to any formal requirements that the examiner has identified. If all issues are addressed, the examiner approves the application for publication.
Once the trademark examiner approves the application for publication, the mark is published in the United States Patent and Trademark Office's Trademark Official Gazette. Publication initiates a 30-day opposition period during which third parties can challenge the registration if they believe it will harm their trademark rights. If no opposition is filed, the application will advance to registration. Upon successful completion of these steps, the applicant receives a certificate of registration, granting exclusive rights to the applied-for trademark.
After trademark registration, the owner must maintain the mark by filing specific documents with the USPTO. Between the fifth and sixth years after registration, the owner must file a Declaration of Use (Section 8) to confirm the mark is in use in commerce and pay required fees. Additionally, every ten years, the owner must file a combined Declaration of Use and Application for Renewal (Sections 8 and 9). Failure to meet these maintenance requirements can result in the cancellation of the registration. Regular maintenance ensures the mark remains protected and continues to signify the source of goods or services. Trademark owners must keep records of your trademark use and maintenance to ensure you can prove ownership and use.
A trademark registrant has the exclusive right to use the registered mark in connection with the goods or services listed in the registration. This exclusivity allows the registrant to enforce their trademark rights by monitoring the marketplace for unauthorized use. If trademark infringement is detected, the registrant can file a lawsuit in federal court to seek remedies, including injunctions to stop the infringing use, monetary damages, and, in some cases, recovery of legal fees. Enforcing these rights helps protect the trademark's value and ensures the mark continues to signify the unique source of the goods or services.
After you register your trademark, you will have continuing responsibilities and rights as a trademark owner. As a trademark registrant, you must maintain and enforce the trademark. The trademark owner must ensure consistent use of the mark in commerce and monitor the quality of the goods or services associated with the trademark to prevent a loss of brand strength and enforceable trademark rights. To preserve your intellectual property rights, you must periodically file the required maintenance documents and fees. Additionally, the trademark owner must enforce their trademark against infringements in order to preserve the strength of the trademark. This includes opposing confusingly similar trademark filings, making cease and desist demands on infringing users, and, when necessary, filing trademark infringement lawsuits against obstinate infringers. Maintaining vigilance over the mark's use and quality helps uphold the trademark's integrity and value, ensuring that it continues to identify your business as the unique source of your goods and services in the marketplace.
Intellectual property (IP) refers to intangible assets that encompass the inventions, creative works, brand assets, literary and artistic works, and valuable knowledge and know-how of businesses, entrepreneurs, inventors, and creators. In most cases, intellectual property rights are creations of the mind that are captured in a tangible form, such as creative writing on paper, a new device built from tangible components, a brand logo presented on product packaging, or a song recorded on a tape or digital memory. However, in some cases intellectual property may never be captured in a tangible form. For example, a chemist may keep their secret method of temperature control and mixing processes to produce a certain chemical product a closely held secret and never capture it in written form. Unlike tangible assets (e.g., a car, a cow, gold, etc.), intellectual properties are legally protectable, intangible creations of the mind. Exclusive rights to these creations can be critical for maintaining a competitive advantage in the marketplace, as they allow IP owners to control the use and dissemination of their creations.
US federal law and state law provide legal protections to these valuable products of human intellect and skill. Different types of intellectual property rights serve to provide legal protection that incentivize creators and innovators to advance the sciences, technology, and the arts by allowing them to reap the benefits of their work. This article provides an exploration of intellectual property law in the US, covering patents, trademarks, copyrights, and trade secrets, and examining how intellectual property laws are designed to protect the interests of intellectual property owners.
A patent is a form of intellectual property protection that grants the patent owner the exclusive right to exclude other parties from making, using, selling, or importing an invention for a limited period, typically 20 years from the filing date of the patent application. Patents are designed to protect inventions and encourage innovation by providing inventors with a temporary monopoly in exchange for the public disclosure of their inventions.
Patent laws in the United States are established by the Patent Act, codified in Title 35 of the United States Code. The United States Patent and Trademark Office (USPTO) administers the patent system, examining applications and granting patents. Federal courts exclusively handle the enforcement of patent rights if patent infringement occurs. A claim for patent infringement cannot be pursued in a state court. Patent owners can seek remedies such as injunctions and damages through civil litigation in federal court.
Trademarks are symbols, words, phrases, designs, colors, sounds, video clips, or combinations thereof that identifies the trademark owner as the source of its goods or services, allowing consumers to distinguish the goods or services from those of others. Trademarks serve to prevent consumer confusion and protect the goodwill associated with a brand. Trademark function differently from other forms of intellectual property. Whereas patents and copyrights reward creators for innovative or creative work, trademarks primarily serve to protect consumers by ensuring that brand names and symbols reliably identify a particular source of goods, thereby allowing the consumer to reliably purchase goods of a known quality from the source. To foster this consumer protection function, trademark law provides protections for trademark owners against unauthorized use of their marks. Trademark owners can establish rights through the mere use of a trademark in connection with goods and services, known as common law trademark rights. The trademark rights can be fortified and formalized through trademark registration.
Trademark law in the United States is primarily governed by the Lanham Act, which provides federal registration and protection of trademarks. The USPTO also administers the trademark system. As a federal agency within the Department of Commerce, the USPTO is responsible for implementing US intellectual property laws in the area of trademarks, examining trademark applications, and determining whether they meet the necessary legal requirements for registration. The trademark registration process involves a thorough review to ensure that the mark is distinctive, not confusingly similar to existing registered marks, and complies with all relevant statutory requirements.
Once a trademark application is submitted, the USPTO assigns it to a trademark examining attorney who reviews the application for compliance with the Lanham Act, the primary federal trademark statute. The examining attorney evaluates the mark’s eligibility for registration, considering factors such as distinctiveness, potential for consumer confusion, and any descriptive or generic qualities that may disqualify it from protection.
If the application meets all requirements, the USPTO will publish the mark in the Official Gazette, allowing the public an opportunity to oppose the registration. If no oppositions are filed, or if any oppositions are resolved in favor of the applicant, the USPTO will issue a registration certificate, granting the trademark owner exclusive rights to use the mark in connection with the specified goods or services.
In addition to federal protection, trademarks can be registered at the state level in California, Washington, Oregon, and states generally. Generally, the Secretary of State’s office administers the state trademark registration system.
Trademark infringement occurs when an unauthorized use of a trademark creates confusion about the source of goods or services, and remedies include injunctive relief and damages under both common law and statutory provisions. Enforcement of federal trademark rights can take place in either federal or state court, depending on the specifics of the case and the preferences of the trademark owner. When trademark infringement occurs, the trademark owner has the legal right to initiate civil litigation to protect their brand and prevent unauthorized use of their mark.
Federal courts are often preferred for trademark infringement cases. Federal jurisdiction is advantageous because the federal court is generally versed in federal trademark laws. State courts, on the other hand, can also hear trademark disputes, particularly those involving common law trademark rights, which arise from the actual use of a mark in commerce rather than federal registration. State law claims, such as unfair competition or dilution, may also be brought in conjunction with federal claims. The choice of state court may be influenced by factors such as the location of the parties, the scope of the alleged infringement, and strategic considerations.
Regardless of the venue, the enforcement process begins with the filing of a complaint outlining the trademark owner's claims. The court will then assess the evidence, including proof of ownership and the likelihood of consumer confusion caused by the infringing mark. Successful enforcement actions result in legal remedies, which may include injunctive relief (an order to stop infringing activities) and monetary damages.
Copyright is a form of protection granted to creators of "original works of authorship," such as literary, dramatic, musical, and artistic works. Copyright law gives the copyright holder the exclusive right to reproduce, distribute, perform, display, and create derivative works based on the original work for a set period, generally the life of the author plus 70 years.
Copyright law is governed by the Copyright Act of 1976, codified in Title 17 of the United States Code. The U.S. Copyright Office, a part of the Library of Congress, administers copyright registration. The Copyright Act provides protection for "original works of authorship" fixed in a tangible medium of expression, covering a wide array of creative works, including literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, audiovisual, sound recordings, and architectural works. Federal copyright law also includes provisions for the duration of protection. Generally, works created on or after January 1, 1978, are protected for the life of the author plus 70 years.
The fundamental purpose of copyright law is to encourage the creation and dissemination of creative works by granting authors certain exclusive rights for a limited period: rights to reproduce the work, create derivative works, distribute copies of the work, publicly perform the work, and publicly display the work. For sound recordings, the rights also include the ability to perform the work publicly by means of digital audio transmission. The law balances the rights of authors with the public interest by incorporating limitations and exceptions, such as the doctrine of fair use. The fair use doctrine allows the use of copyright works without permission for certain purposes that benefit the public, including news reporting, research, teaching, scholarship, comment and criticism. Other exceptions include certain uses by libraries and archives, educational performances and displays, and specific reproductions for individuals with disabilities. By providing robust protection and a framework for the fair use of creative works, federal copyright law aims to stimulate creativity and the dissemination of knowledge, ultimately benefiting both creators and the public.
Copyright protection arises automatically upon the creation of a work that meets the originality and fixation requirements. However, registration with the U.S. Copyright Office, although not mandatory, offers significant advantages. Registration establishes a public record of the copyright claim, is necessary to bring a lawsuit for infringement, and allows for the possibility of statutory damages and attorneys' fees.
Enforcement of copyright law is primarily achieved through civil litigation. Copyright litigation can only be pursued in federal court. The plaintiff must establish that they own a valid copyright, which can be demonstrated through registration with the U.S. Copyright Office. Registration is a prerequisite for filing an infringement lawsuit for works created after January 1, 1978.
The elements of a copyright infringement claim include proving ownership of a valid copyright and demonstrating that the defendant copied protected elements of the work. This involves showing access to the copyrighted work and substantial similarity between the original work and the alleged infringing work.
Once copyright infringement is established, various remedies are available to the copyright owner. These include injunctive relief to prevent further infringement, actual damages to compensate for financial losses, and statutory damages, which can range from $750 to $30,000 per work infringed, and up to $150,000 per work for willful infringement. Additionally, courts may award attorneys' fees and court costs to the prevailing party.
In cases of willful infringement, criminal penalties may also be imposed, including fines and imprisonment. These remedies aim to deter infringement and compensate the copyright owner, ensuring the protection and enforcement of intellectual property rights.
A trade secret is any confidential business information that provides a competitive edge, such as formulas, practices, processes, designs, instruments, patterns, or compilations of information. Unlike other forms of IP, trade secrets are protected as long as they remain confidential and are subject to reasonable efforts to maintain their secrecy.
The Federal Defend Trade Secrets Act (DTSA), enacted in 2016, represents a significant advancement in the protection of trade secrets in the United States. Before the DTSA, trade secrets were governed exclusively by state laws, leading to inconsistencies across jurisdictions. The DTSA provides a federal cause of action, allowing trade secret owners to sue in federal court for misappropriation.
The DTSA defines a trade secret broadly to include all forms and types of financial, business, scientific, technical, economic, or engineering information, provided it is subject to reasonable measures to keep it secret and derives independent economic value from not being generally known or readily ascertainable.
Under the DTSA, plaintiffs can seek remedies such as injunctions to prevent the use or disclosure of misappropriated trade secrets, monetary damages for actual losses and unjust enrichment, and in cases of willful and malicious misappropriation, exemplary damages up to twice the amount of actual damages. The DTSA also provides for the recovery of attorneys' fees.
Additionally, the DTSA includes provisions for civil seizure, allowing courts to order the seizure of property necessary to prevent the dissemination of trade secrets in extraordinary circumstances. This federal framework enhances the protection of trade secrets, promoting innovation and safeguarding competitive advantage in the marketplace.
The Uniform Trade Secrets Act (UTSA) provides a standardized legal framework for the protection of trade secrets, adopted by the majority of U.S. states to bring consistency and clarity to trade secret law. Before the UTSA, state laws regarding trade secrets varied significantly, creating challenges for businesses operating across multiple states.
Under the UTSA, a trade secret is information having independent economic value as a secret and is subject to reasonable efforts to maintain its secrecy. This includes a wide range of confidential business information, such as formulas, patterns, compilations, programs, devices, methods, techniques, or processes.
The Act outlines the elements of trade secret misappropriation, which occurs when a trade secret is acquired through improper means or disclosed or used without consent. Remedies under the UTSA include injunctive relief to prevent further misappropriation, monetary damages for actual losses and unjust enrichment, and in cases of willful and malicious misappropriation, exemplary damages up to twice the amount of actual damages. The UTSA also provides for the recovery of attorneys' fees in certain circumstances.
California, for example, has adopted the Uniform Trade Secrets Act (UTSA), codified in the California Civil Code. The California UTSA provides robust protections for trade secrets, including the ability to seek injunctive relief and damages for misappropriation.
While federal courts have exclusive jurisdiction over patent and copyright cases, both federal and state courts can hear trademark and trade secret cases, depending on the circumstances. California state courts play a crucial role in the enforcement of state-level IP rights, such as trade secrets and the right of publicity.
Intellectual property lawyers play a vital role in advising clients on the protection, enforcement, and commercialization of their IP rights. They assist with the registration of patents, trademarks, and copyrights, represent clients in IP litigation, and provide counsel on matters related to IP strategy and technology transfer. Intellectual property lawyers help IP owners navigate the complex landscape of IP laws to maximize the value of their intangible assets.
The protection of intellectual property extends beyond national borders. International agreements establish minimum standards for IP protection. The treaties include the Patent Cooperation Treaty, governing an international patent system and the Madrid Agreement Concerning the International Registration of Marks that established an international trademark registration system, both administered by the World Intellectual Property Organization. These agreements ensure that IP rights are recognized and enforced globally, facilitating international trade and investment.
Having read the foregoing, you should now be able to provide a fairly informed answer to the questions "What is intellectual property?" Intellectual property laws are essential to the business environment, as they stimulate innovation and reward technological progress, protect creative works, and drive economic growth. By understanding the different types of intellectual property protection, including patents, trademarks, copyrights, and trade secrets, individuals and organizations can consider and strategize about what their intellectual property assets and which of them they need to safeguard through registrations, patenting, and/or confidentiality protections.
As intellectual property law continues to evolve, staying informed about legal developments at both the federal and state levels remains essential for effective IP management and enforcement. Intellectual property lawyers can provide valuable guidance to intellectual property owners, shepherding them through the registration and patenting processes at the US Patent and Trademark Office and the US Copyright Office. The protection of intellectual property is vital for entrepreneurs and businesses who are geared to toward innovation.
If you or your business needs assistance with intellectual property matters, contact our firm for a free consultation. We are experienced and skilled in all areas of intellectual property law.
The novelty requirement is a foundational aspect of US patent law. An invention must be something new in order to be considered patentable. Patents are only granted for inventions that are truly new. Anticipation is not the only requirement for patentability. Novelty is one of several statutory requirements, including patent-eligible subject matter, novelty, obviousness, written description, enablement, and definiteness. We provide separate articles for each of these requirements. This article explains the novelty requirement, including key concepts like anticipation and inherency.
The novelty requirement is primarily codified in 35 U.S.C. § 102. This section sets forth the conditions under which an invention is considered novel. The statute has undergone significant changes, most notably with the passage of the America Invents Act (AIA) in 2011, which transitioned the U.S. from a "first-to-invent" system to a "first-to-file" system. Under the pre-AIA law, the focus was on whether the invention was known or used by others in the U.S. before the applicant's date of invention or whether it was patented or described in a printed publication anywhere in the world before the invention date. Post-AIA, the critical date shifted to the filing date of the application, and the relevant prior art includes disclosures anywhere in the world before the effective filing date.
35 U.S.C. § 102 outlines the conditions for patentability with respect to novelty. The claimed invention in a patent application must be new relative to the relevant prior art. Thus, in order to understand the novelty requirement, you must understand what qualifies as prior art with respect to a particular patent application.
A claimed invention is not novel if it was patented, disclosed in a printed publication, publicly used, offered for sale, or otherwise available to the public before the priority date of the patent application. Additionally, if the claimed invention was described in a patent or in a patent application published or deemed published under 35 U.S.C. § 122(b), and the patent or application has different inventorship and was effectively filed before the effective filing date of the claimed invention, it is considered prior art. For determining whether a patent or application is prior art under 35 U.S.C. § 102(a)(2), the patent or patent application reference is considered to have been effectively filed as of the actual filing date, or the earlier filing date of a prior filed application if it claims priority to the prior-filed application.
The statute also provides exceptions under 35 U.S.C. § 102(b). Disclosures made one year or less before the effective filing date of the claimed invention are not considered prior art if the disclosure was made by an inventor, joint inventor, or someone who obtained the subject matter disclosed directly or indirectly from one of the inventors. Moreover, prior art does not include subject matter publicly disclosed by the inventor or a joint inventor before the effective filing date of the patent application.
Another critical aspect is the consideration of joint research agreements under 35 U.S.C. § 102(c). Subject matter disclosed and the claimed invention are deemed to have been owned by the same person or entity if they were developed under a joint research agreement in effect on or before the effective filing date of the patent application. The patent application must disclose the names of the parties to the joint research agreement.
An applicant’s identification of another's work as "prior art" in the specification or during prosecution is an admission usable for anticipation determinations, even if it would not otherwise qualify under 35 U.S.C. § 102. However, the inventor's own work is not prior art unless statutorily qualified. Examiners must verify if the admitted prior art is the inventor’s or another’s work, treating it as another’s in the absence of evidence.
A single prior art reference must disclose all the elements of the claimed invention in order to anticipate the patent claim. This means that the prior art must explicitly or inherently disclose every aspect of the claimed invention. The novelty requirement prevents the patenting of inventions that are already known and encourages innovation by ensuring that only new and unique inventions are granted patent protection. The prior art reference must be enabling to one or ordinary skill in the art in order to be a proper prior art reference. This means that the reference must provide sufficient information for a person of ordinary skill in the art to practice the claimed invention without undue experimentation. The prior art reference must include a level of detail that allows a skilled person to understand and practice the claimed invention. This includes descriptions of the invention's components, methods, and any necessary conditions or parameters. This concept applies both to patent applications and prior art references used to challenge the novelty of a patent claim.
Claim: A pharmaceutical composition comprising:
Prior Art Reference: A scientific journal article published two years before the effective filing date of the patent application describes a pharmaceutical composition that includes Compound X in a therapeutically effective amount and citric acid in a concentration of 0.5 micromolar in a pharmaceutically acceptable carrier.
Analysis: In this case, the prior art discloses all the elements of the claimed invention. The composition described in the journal article includes Compound X, citric acid in the claimed range, and a pharmaceutically acceptable carrier. Therefore, the reference anticipated the claimed invention because all of the elements were disclosed.
The same claim would not be anticipated by a scientific journal article published two years before the effective filing date of the patent application describes a pharmaceutical composition that includes Compound X in a therapeutically effective amount and citric acid at a concentration of 2.0 micromolar in a pharmaceutically acceptable carrier. Additionally, a different prior art reference from a different journal describes Compound X and citric acid in the claimed range, but does not combine it with a pharmaceutically acceptable carrier.
Analysis: In this scenario, no single prior art reference discloses all the elements of the claimed invention. The first journal article describes a composition with Compound X and a carrier, but the citric acid is not in the claimed concentration range. The second reference disclosed compound X and citric acid in the claimed range, but does not disclose the pharmaceutically acceptable carrier claim limitation. Because there is no single reference that discloses all of the claimed elements, the claim is not anticipated.
There are some further nuances to the application of an anticipation rejection, which are discussed below.
Inherent disclosures of a prior art reference can be used to reject claims as anticipated under 35 U.S.C. 102. Inherency refers to implicit features within prior art that are not explicitly stated in the written description, but are necessarily present. A discovery of a new property of a prior art composition does not make it patentable. For example, the identification of a previously unrecognized DNA sequence does not render the sequence novel if it was inherently present in prior art. The inherent feature does not need to be recognized at the time of the prior art's publication. Even if the characteristic was unknown, it can still anticipate the claim if it is a necessary feature of the prior art. Anticipation rejections are appropriate when a prior art product appears identical to the claimed subject matter, except that the prior art is silent about an inherent characteristic. The US patent office must identify and provide evidence that the missing limitation is inherent in the prior art technology. The patent examiner must demonstrate that the asserted inherent characteristic is actually inherent in the subject matter disclosed by the prior art reference. This principle applies to product, apparatus, and process claims described in terms of function, property, or characteristic. Hence, inherent features in prior art references play a critical role in patent examinations and litigation.
Anticipation of ranges in patent claims is determined by whether a prior art reference disclosing a specific example falls within the claimed range. In the example of above, the prior art disclosed a pharmaceutical composition that includes Compound X in a therapeutically effective amount and citric acid in a concentration of 0.5 micromolar in a pharmaceutically acceptable carrier, where the claim recited citric acid in a range of 0.1 micromolar to 1.0 micromolar. Thus, the prior art reference anticipates the claim because 0.5 micromolar falls in the claimed range. A prior art reference disclosing a value or range close to but not overlapping or touching the claimed range does not anticipate the claim.
Anticipation in genus-species situations involves whether a prior art reference disclosing a species can anticipate a claim to a broader genus. If a prior art reference discloses a specific species within a claimed genus, it anticipates the genus claim. For example, if a reference names a specific chemical species within a Markush claim of a genus of compounds, the species can anticipate the entire genus. A Markush claim is a type of patent claim used to define a genus by specifying a list of alternative species or elements within a single claim, as follows: "A composition comprising a member selected from the group consisting of A, B, C, and D." If a reference disclosed a composition comprising A, it would support an anticipation rejection.
However, a genus does not always anticipate a claim to a species within that genus unless the species is clearly named in the reference. For example, if a reference lists multiple compounds, the mere inclusion of a claimed species among them anticipates the species claim.
A generic disclosure will anticipate a claimed species when the species can be "at once envisaged" from the disclosure. This means that the prior art must provide sufficient detail that a person skilled in the art can immediately recognize the specific species within the broader genus. For example, in Kennametal, Inc. v. Ingersoll Cutting Tool Co., a prior art reference was found to anticipate a claim because it provided sufficient evidence that a person skilled in the art would immediately envisage the specific combination of elements. In contrast, if a generic formula encompasses an infinite number of compounds, a specific compound within that formula is not anticipated unless the reference provides a more limited and detailed disclosure. This was highlighted in In re Meyer, where a specific compound was not anticipated because the prior art limited the generic composition disclosure.
In summary, anticipation in genus-species situations depends on the specificity and detail provided in the prior art reference. A specific species can anticipate a genus, and a generic disclosure can anticipate a species if it allows the species to be readily envisaged.
While normally a single reference is used for rejections under 35 U.S.C. § 102, multiple references can be employed under specific circumstances: to prove the primary reference contains an "enabled disclosure," to explain the meaning of a term in the primary reference, or to show an inherent characteristic not explicitly disclosed.
These scenarios highlight the flexibility in applying multiple references to ensure a comprehensive assessment of the primary reference's disclosure, enabling a proper anticipation rejection under 35 U.S.C. 102.
During patent examination, the examiner searches for prior art, such as printed publications or patents, that are published and that were filed prior to the priority date of the examined patent application. This involves comparing the effective filing date of the patent application and the date of the reference. The examiner must also ascertain the issue or publication date of the reference to make a proper comparison. If the reference predates the effective filing date of the claimed invention, it may be used to in an anticipation rejection. The examiner may also look to evidence of public use, sale, or knowledge of the invention by others. This includes admissions by the applicant or examiner’s knowledge of the invention’s public disclosure.
Examiners can request additional information from applicants to resolve issues related to public use or sale, ensuring that the information sought is reasonably necessary for the patentability decision. Failure to respond to these requests within the specified timeframe can result in the application being considered abandoned.
Applicants can overcome a 35 U.S.C. § 102 rejection by arguing that the reference fails to disclose each and every element in the claim language, the reference is not enabled, and/or by amending the claims.
Understanding the nuances of prior art disclosure, including the timing of disclosures is crucial for inventors and patent practitioners. The statutory provisions under 35 U.S.C. § 102 provide a comprehensive framework to assess the novelty of a claimed invention, ensuring that patent claims are genuinely new and not anticipated by prior art references. The novelty requirement protects the public from the unjustified patenting of existing knowledge, thereby encouraging new innovation.
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