If you are wondering if the invoice or bill you received by mail is legit, please read on.
Scammers consistently target US trademark applicants and registrants. Many of those have names bearing a close resemblance to the name of the United States Patent and Trademark Office (USPTO) such as Patent and Trademark Office, LLC.
First off, if you have hired a U.S. attorney to work on your trademark application, you can safely ignore all but your attorney. The USPTO do not contact trademark owners directly when it has other contacts such as an attorney of record.
Second, the renewal of trademark registration requires paperwork. You simply cannot extend the life of a trademark registration by just footing a bill. Hence, the USPTO never sends you a bill; instead, it accepts filing fees along with required paperwork.
Lastly, this goes without saying. But when you are in doubt, do not pay!
Well, I get that question a lot as an IP attorney. I have been working on trademark cases for about ten years now. In fact, one of the first things I did as a newly minted attorney in Chicago was to file a response to an office action rejecting a trademark application by YS bee farms.
Ever since, I’ve been working with small and large businesses to get their trademarks registered or help them enforce or defend their trademark rights in courts. These clients are more or less established businesses.
Then, Amazon Brand Registry happened, and everyone wants a registered trademark now. Literally, everyone. I get an email from an individual who wants to aspire to become a successful Amazon seller every now and then. Unfortunately, these online retail newbies often ask the wrong questions:
How much does it cost to get a registered trademark?
Well, it depends, if you want just something with ®, it would only cost you $250, seriously. If you want something of value, it can go way up.
Are there any requirements to get a registered trademark?
Well, ironically, the answer is a trademark. You’re registering a trademark you already have! (With an exception of ITU, of course.)
The question you should ask
A business experienced in retail always come with brand/name candidates instead of a product label already printed out. They ask me questions like:
“Can we use any of them?”
“What do you think is the best?”
“Are there any conflicting marks out there?
And the ultimate question: “is this a good one?”
These are all really good questions. Also, I hear them so often. When it comes to a certain mark there are always specifics that do not apply to other cases. However, there are repeating themes that are sort of universal. I want to discuss some of the universal tips.
Use TESS
Your brand name should be remembered. To achieve that, often you resort to tapping into your own memory and experience. Then, you come up with something familiar.
Now, familiarity is the enemy of a distinctive mark. You don’t want to pick something that has been used by another for many years. In fact, if there is likelihood of confusion between the old mark and your mark, you will be legally barred from using or registering the name.
TESS is an acronym of Trademark Electronic Search System. It’s a free and powerful tool. You can simply type up your candidate to see if there’s any identical trademarks that are registered, applied-for registration, or cancelled of registration.
I mentioned likelihood of confusion, which means you should also avoid similar marks. To find similar marks, you can do advanced searches on TESS as well. Advanced search needs some knowledge and practice. But, there are some easy things you can start right away.
Use $ signs to expand your search.
Let’s say your brand name candidate is “Aweriginal”. You can try “Awe$” or “$riginal”, which will return anything starting with awe- and ending with -riginal, respectively.
The dollar sign works fine in the non-advanced search option, “Basic Word Mark Search (New User)”.
Narrow it down to your market.
Well, the internet made all trademarks essentially nationwide. In other words, I’m not talking about the geographical market. On the other hand, you can still have identical trademarks used by independent entities. For example, you may use “Aweriginal” for your grocery store while “Aweriginal” has been used for decades by someone else for a beauty salon service.
Although there is no clear cut answer to what types of good/service can be said to be distinctive (or in different markets), you can more often than not rely on international classes. To narrow your search to a specific international class, you should use “Structured Search”.
Searching for anything with “awe-” in advertising and business category only.
In doing so, you can eliminate a lot of candidates that are too similar to already existing marks.
Use common sense
If your brand name reminds of someone else other than you, it’s not a good name. If your name tricks a customer into a belief that they are buying from someone else, it goes against the very idea of trademark: it should tell consumers where the good/service comes from.
Similarly, if your brand name simply tells what the good/service is, it’s not a good name. It should tell where it comes from, but not what it is.
Tips for good naming
I digress. This article is actually about how to give a good name. All I said so far is how to avoid bad names.
So, here are some hacks.
Tweak spellings
This is probably all too familiar. Our example “Awerigional” is indeed a tweak of “original” using awe- instead of “o”.
Use suffixes
If you are fond of a certain word or common name, you can add suffixes to it for extra distinctiveness. If I were to use my name “Jeon” for a trademark, I would soon realize there are more than 500,000 people with the same name in South Korea alone.
However, Jeonish, Jeonastic, and Jeonity are all pretty distinctive and easy to remember names if you’re already familiar with the “Jeon” name.
Make it simple
A catchphrase is very attractive, but it does not go far legally. It’s not to say that you can’t have a phrase registered as a trademark. In fact, it’s often easier to have a phrase registered than a word.
However, when it comes to trademark protection, it should not just protect against identical copycats but also against similar rip-offs. As phrases often convey a meaning, your competitors can easily claim that they’re just using the phrase for the meaning.
So, “it’s so deli-cious” is never be a good name for your delicatessen however tempting.
Use it properly
My final advice has nothing to do with naming. Nonetheless, if you’re using a good name the wrong way, it would be shame.
Don’t refer your product/service by just the trademark. For example, don’t call your specialty raisin bread Aweriginal. It should be Awriginal raisin bread. It’s true even if no other bread in your bakery is called Awriginal.
Patent protects inventor’s exclusive right to an invention, but at the same time it aims to promote further advancement of the same technology.
These are conflicting goals for which patent provides a comprehensive exclusivity that is also clearly defined.
If you are considering patenting your invention, you should first understand the limitations which define the scope of your patent right.
Patent limitations
It is often said that patent protects an idea or more specifically a product. However, technically, a patent is a document that claims rights to a certain combination of characteristics included within the idea or product.
Let me illustrate with a hypothetical whitening cosmetic product. In your patent, you claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B
in a solution.
Anything that includes all three of limitations above can infringe the patent unless the patent owner allows it.
I said “all three”, so if one sells a product containing ingredients A and B but in a solid form instead of a solution, your patent can’t stop it.
Overcoming limitations
To avoid a situation where your right is limited in a way that can be easily designed around, your claims need to be as less limited as possible.
For example, you can claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B.
This can protect anything that contains A and B at the same time. However, on the other hand, if there was anything that contains A and B at the same time before your invention, your invention is no longer “new”, which is a requirement to get patented.
Not convinced? Let’s say your ingredient A is extracted from apple and ingredient B is glycerin. You can easily find a beauty tip suggesting an addition of glycerin to apple juice for a homemade facial mask.
Hence, in all likelihood, you will claim something like
a solution
that contains no less than 0.2% of whitening ingredient A
and no more than 5% of moisturizing ingredient B.
Well, let’s say in the nature you will not find an apple that has so much enriched with the A.
Design around
Now you have clearly defined patent claims. It’s time for your competitors to find a way around it. We call it a design-around.
For example, your competitor can market a product that contains 0.19% of whitening ingredient A. As explained above, this does not infringe your patent.
Patent sounds pretty useless now? Well, not so fast. There should be an assumption that if A is less than 0.2%, the product will not have adequate potency to brighten skin complexion.
The same goes to ingredient B. You should set the numbers in a way that, for example, if you have more than 5% of B, the solution will be too sticky to be easily applied on skin.
Conclusion
Getting a patent is easier than you think, but getting a strong patent is harder than you think.
In fact, when you apply for a patent, the patent examiner at USPTO will find something like homemade facial mask to say your invention is not new, during a process called Office Action. You can overcome the argument by adding limitations such as 0.2% and 5%.
In so doing, you may end up with a weak patent unless you anticipate ways to design around and make it harder for your competitors.
To register a trademark, you need to either (1) have used a mark (could be a brand name, a company logo, or even a unique color) in association with your good or service or (2) have a bona fide intent to use it.
Many clients reported that they received an unsolicited service invoice from Service BPM 326634 at 8345 NW 66 ST #2000 33166-7896 Miami, which looks like this:
It has nothing to do with your U.S. trademark registration, and you are advised to ignore and discard it.
If you have questions regarding trademark protection in other countries than the U.S., please contact your attorney.
The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?
Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.
I help many clients who received cease and desist letters stating their products infringe some patent rights. By the time they come to me, it’s about ruling out frivolous claims, mitigating damages if not frivolous, and reducing costs related to settlement and litigation.
What if you can avoid all those by doing these simple things before launching your product?
Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (SeePossible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.
The USPTO provides ample resources to guide first-time DIY-ers through the trademark application and registration process. However, it does not give you much regarding when and how you should decide to seek expert help. Here comes a seasoned IP attorney’s take on “when should you go the DIY route.”
You will hear many patent practitioners tell you against DIY if not all. And there are many good reasons. However, if you are in a situation where you simply cannot justify spending legal fees, you should be able to file an application yourself if you have enough time.
First of all, what is patent?
Patent is a right given to an inventor of a thing (or a way to do things). When a patent is granted to the inventor, then, he or she can legally exclude others from making, using, or selling the thing (or the way to do things).
Patent has been there for the entire history of the U.S. as it is written in the U.S. Constitution:
[The Congress shall have power to] promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
U.S. Constitution Section I Clause 8
As such, it is fairly well defined by the statutes and regulations as well as case laws, which means businesses can rely on them more than anything when it comes to guarding them against copycats.
When should you get one?
Patent recognizes not only the first person who thought of it, called the inventor, but also the first person who brought it to the patent office. In other words, you want to be the person who first filed a patent application. If two people thought of the same thing, the first one to file a patent application will likely get patent right.
If you are certain that no one will think of the same thing, you can sit on it until the right time to file. In this case, it is important not to disclose it to anyone, including by using it in the public.
If you have to disclose it or publish it or others will soon catch up, you’d better hurry up.
Patent is an exchange.
The government essentially let you have a monopoly for a limited time when it grants a patent to you. Instead, you will disclose your invention to the extent that other people with ordinary skills in the same field can understand and use your invention.
For a limited time period, which is usually 20 years, you will enjoy the government sanctioned monopoly, and after that, it should become a level playing field.
This allows many others to continue to make improvements based on what you have made. So, the government can “promote the progress of science and useful arts” as written in the Constitution.
Now, how to get a patent?
Getting a patent is a burdensome process incurring significant monetary expenses. Your application is unlikely to get examined in a few months (unless you get prioritized examination), and most applications stay untouched for more than a year. Thus, the patent law allows you to claim “patent pending” status to warn others against infringement of your potential right.
You probably have seen “patent pending” mark somewhere. In fact, it is a great marketing phrase because many people associate patent with innovation and being desirable.
The patent pending status can be obtained when a patent application is filed, including provisional applications. What is provisional application? Essentially, they simply claim that you have invented a thing. Your provisional application will not be examined by the USPTO. Instead, a non-provisional application should be filed within a year from the provisional filing date if you want to get it examined and thereafter potentially patented.
A provisional application is not only a great first step toward getting your invention patented but also a great money saving option. For one, you do not need legal expertise to file a provisional because it will not be examined (although you need to be very careful about what is included in your provisional). When a year has passed from filing a provisional, you can then reevaluate your options, including entirely dropping the plan to patent it. If you do not file a follow-up non-provisional, the provisional application will never see the sunlight (i.e. will not get published), so you do not need to worry about premature disclosure to the public.
From here on, we will focus on filing a provisional patent application because for non-provisional, you definitely need an expertise, and if you already have one, you are certainly not the target audience of this article.
How to file a provisional patent application
As a provisional application is never examined, you only need to file literally any writing. Your experiment note or a journal entry about your invention can work for this purposes.
However, when the serious time comes and you file a non-provisional, the examiner will review your provisional and see if there is any new matters introduced in the non-provisional. If you want to claim the early filing date (of provisional), there should be no new matter.
New matters are often associated with improvements and undisclosed specifics of the invention, but oftentimes, the examiner will simply reject anything that was not in the original provisional application.
Therefore, although provisional applications need not to be perfect, they need to be thorough. To be as thorough as possible, you should definitely check out how issued patents look like.
Find a model patent (preferably an issued patent)
I suggest you use Google Patents to find a patent that was examined and granted (i.e. an “issued” patent). All non-provisional applications get “published” at some point, but not all of them get patented.
Preferably, you want one in the same field as your invention. For example, if you have invented a better rocking chair, you can search “rocking chair” in Google Patents. Then, choose “Patent Office—US” and “language—English”.
From the search result, “Gliding rocking chair and ottoman” as shown below was filed relatively recently (in 2010).
Now you see “Download PDF” button in the blue box. This allows you to download a full image of the published application. As you can see on the “Status” line, this application was never patented but “[a]bandoned”.
Well, many patent applications get abandoned but all non-provision applications are published. So, you may want to see only patented cases. Go back to the search result and choose “Status—Grant”.
Now, I found “Rope rocking chair” filed in 2016.
Required parts of a provisional application
Download PDF and you’ll find the followings:
Abstract
This part is a summary of your invention, but it is not required in provisional.
Drawings
Not always required, but if your invention is a physical thing, you’d better have them prepared. A picture can say more than a hundred words. Also, if you don’t have a drawing in a provisional application, getting drawing included in a follow-up non-provisional can be tough.
If you have 3D CAD image, you want to produce more than one view. If you absolutely can’t draw, take a picture of your prototype and make it black-and-white as a last resort.
Specifications
Find the following headings: Technical Field, Background, Summary, Description of Drawings, and Detailed Description. You need all of them.
Write as if you are explaining your invention to your peers, so they can make it themselves. Not the investors or customers. This is important.
Claims
You won’t need claims in your provisional.
File the application with the USPTO
Everything can be done online. The USPTO has utilized electronic documents for a long time, and although its Electronic Filing System may look very outdated, it works alright.
Note, the system is not fool-proof, meaning you can submit an incomplete application without any warning. On the other hand, it will check your electronic files for compatibility.
Access the EFS using the following link. You can use it as unregistered eFiler without registration.
Simply write down your name and email address, then choose “New application/proceeding” as below.
Provisional is only available for utility patent, so choose “Utility”.
Utility patent is what we usually think a patent is. On the other hand, design patent protect non-functional ornamental features. Learn more about design patent here.
Logged-in Page
The first step is providing a set of basic information, collectively called “Application Data”. This is actually very important, so be careful and double check. Also, Application Data Sheet is a required part of any patent application.
If you choose Web-based ADS, you don’t need to get a PDF form elsewhere. When you select Web-based ADS, the page will be populated with additional boxes.
The following boxes must be filled.
Inventor information
It’s about who invented the invention. Easy.
Next, your contact info.
Check “An Address is being provided for the correspondence information of this application” to see the all blanks. This form is interactive, so you often need to check some items to see the entire form.
Because you are probably an inventor/applicant, you will write down all the same information about yourself in the corresponding fields. By the way, if you want your company to have the patent right, you can simply substitute your company for the applicant.
Next, you will provide information about your invention.
Just name your invention in a few words. As you’ve seen, “Rope Rocking Chair” was fine.
You probably want to check “Small Entity Status Claimed”. You will get 50% discount on your government fees, if you are not a company with 500 employees or more.
If you’re gross income is less than a certain limit specified on Micro Entity Status Gross Income Limit | USPTO, you may qualify for Micro Entity Status, which gives additional 50% discount. Eventually, you will pay only 25% of the standard government fees.
To get Micro Entity discount, you need to upload an additional form called “Certification of Micro Entity Status”. You can find a current form on Forms For Patent Applications Filed On Or After September 16, 2012 | USPTO. You can upload the form with your application parts as explained in the later part of this article.
Skip some boxes, and you will find Applicant Information. This only applies if you are not filing the application in your (inventor’s) name. This happens when you want your company to be the patent owner as an assignee of your right to the patent as the inventor. Check “assignee” if you fill out this part.
Now, sign the form.
Two slashes (“/”) are required parts of your signature. Do not forget them.
If you don’t fill out every asterisked (*) blank, you can’t save and continue. See if you forgot one in case of some error messages.
Upload your application
After hitting “Continue” on your ADS page, you can see the progress of your application on the tab on the top, moved from “Application Data” to “Attach Document”.
Find “Choose File” button. You can access files on your computer from here. After selecting a computer file, you can choose Category and Document Description accordingly. To add more files, you hit “Add File” button.
You can have all your parts in one pdf file. It actually asks if your document contains multiple documents. If you hit “yes”, you can set page ranges for individual categories for each part of your application.
Required parts (find SB/16 form in the link provided above)
Optional part (if you qualify Micro Entity Status)
Entity Status Correspondence—Certification of Micro Entity (SB/15)
Your “Drawings” and “Specification” are your word documents printed or saved in PDF form. You should prepare these in the same format and style as the model patent you found in Google Patents.
Make sure you select correct “Category” and “Document Description”, and hit “upload and validate”. If there is no error in the files, you can hit “review”, then “continue”.
Your progress bar will move to Calculate Fees tab.
Calculate fees and make payment
Make sure you select Small Entity or Micro Entity Status, whichever is appropriate for you. The selection is not automatic.
Once you choose your status for the fee calculation, you will choose “provisional” as shown below.
Now, all you have to do is make payment online. Although you can submit the documents without paying right now. Your application is officially filed only when the correct fees are paid.
Payment process is just like any online shopping.
After you make payment, make sure to view and save your filing receipt using the button available on the right side of the screen. The information available on the filing receipt will be used to communicate with the USPTO regarding your application in the future.
Service BPM 326634 at 8345 NW 66 ST #2000 33166-7896 Miami, which looks like this:
