IPfever

Atlanta law firm for global business

Category: Intellectual Property

  • Promotional Phrases as Trademark

    Promotional Phrases as Trademark

    Nowadays, in addition to “maker” and “brand”, “product name” is increasingly used as a trademark. There are simply so many product types and variations. Take a look at an example below:

    GREEN CLEAN is a product name of a cleanser from Farmacy Beauty. My impress is that it is something that naturally cleans your skin. It feels natural because of the word GREEN, and I can assume it is a cleansing product because of the word CLEAN.

    Well, this type of phrases well serve the purpose of explaining what the product is in addition to telling it apart from competitors’. However, because of the former, there’s limited protection.

    Descriptive phrases

    When your product name simply describes what it is, this cannot be registered on Principal Register but instead you may place it on Supplemental Register, which kind of serves as a waiting list to be registered on Principal Register.

    GREEN CLEAN is no different as belows.

    Why people or companies bother to register their marks on Supplemental Register? It still is a register, and it affords you the right to put ® symbol next to your product name. Other than that, it's a great stepping stone to later register on Principal Register.

    Tough luck if…

    You may be denied of registration altogether on both principal and supplemental register if your description is deceptive. For example, if you want to use the surname Obama for your book club, the USPTO would certainly refuse to register a name such as OBAMA BOOK CLUB.

    When the description might deceive consumers or defraud them, it simply is not a trademarkable name.

    In reality, though, you will face more issues with characteristics and features of your product or service. For example, let’s say you name your clothing brand SILK THE EXTRA ORDINARY. Then, the USPTO might want to confirm if your clothing is actually made of silk.

    Not a ban

    You can definitely use SILK for your soy milk product.

    Using a descriptive word in a non-descriptive way is actually a great way to create something distinctive without much creativity.

    Of course there are other ways. For example, SILKY may convey a similar meaning while avoiding deception. EXTRA ORDINARILY SILKY may not trigger the same rejection as SILK THE EXTRA ORDINARY though it’s very similar.

    Another example is COPY CALF for artificial leather goods. Although it is not made of CALF, the addition of COPY made it not deceptive.

    It was an obvious play on the expression “copy cat” and suggested to purchasers that the goods were imitations of items made of calf skin.

    A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962).

    Last words

    As always, trademark law looks at the perception of consumers, and therefore it’s very subjective. So, you can simply look at a wording to figure out if it’s a good trademark. You should take account of the market/industry, target consumers, and product features together with the wording itself.

  • Amazon Brand Registry related FAQ

    Amazon Brand Registry related FAQ

    Amazon Brand Registry is one of the strongest Amazon selling tools as a seller can control the entirety of Amazon listings for all products associated with a brand. It’s a free service for a seller who owns a UPSTO registered trademark.

    As Amazon Brand Registry is a private program ran and controlled solely by Amazon, Amazon can do whatever it wants regarding the program including registration requirements.

    Hence, you should take a note the following materials are only provided as an anecdote of an attorney who only indirectly experienced enrollment in Amazon Brand Registry through his clients.

    What is Amazon Brand Registry?

    What are requirements to participate in Amazon Brand Registry?

    What is Amazon Brand Registry Beta?

    Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

    Should I give a chance to Amazon IP Accelerator program?

    Why do I need to register my mark/brand/logo with the USPTO?

    What is Amazon Brand Registry?

    Amazon Brand Registry is an Amazon’s own program that offers its sellers an ability to control, edit, and possibly remove listings related to the sellers’ registered trademark.

    Go to Amazon’s Brand Services page to get more info.

    What are requirements to participate in Amazon Brand Registry?

    The answer used to be simple. In the beginning, Amazon only allowed “registered” trademarks, meaning you need to first have your trademark registered with the USPTO before you enroll in Brand Registry.

    The problem was that when you file a trademark application with the USPTO, the following happens:

    • At least four months for the USPTO to examine your mark
    • At least a month for notice to the public via publication
    • At least two months for processing and waiting for USPTO actions

    In sum, the trademark registration process takes at least seven months, which means an Amazon seller who launched a new brand would not be eligible to enroll in Brand Registry for a significant period of time.

    That brought Amazon to recently start a pilot program Brand Registry Beta that allows sellers in the U.S. and India to apply for Brand Registry as soon as they file an application.

    What is Amazon Brand Registry Beta?

    It’s an invitation-only pilot program that allows you can request an enrollment of your brand with a pending trademark application.

    According to its introduction page, the requirements are

    1. a pending trademark application with the USPTO or the Indian counterpart,
    2. you have an Amazon seller or vendor account, and
    3. you have no trademark currently enrolled in Amazon Brand Registry.

    If you met the aforementioned requirements, you need to fill out a form to be waitlisted. The form asks you the followings:

    • Trademark office where your trademark is pending registration
    • The number of your trademark application (serial number for US trademarks and trademark application number for India trademarks)
    • First name
    • Last name
    • Email (valid email addresses only)
    • Company name
    • Brand name
    • If you have a seller central account please provide your merchant token. If you have a vendor central account please provide the email associated with your vendor central account

    Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

    A U.S. Serial Number is immediately available when you file a trademark application with the USPTO via TEAS. However, we don’t know yet how soon you can use tools available through Amazon Brand Registry.

    When we have statistically meaningful data as to how long the process takes, I will post here.

    last update on 9/24/2020 by Young Jeon, Esq.

    If you can’t meet the Amazon Brand Registry Beta requirements, you can alternatively consider Amazon IP Accelerator program. The IP Accelerator program has affiliated law firms that offer trademark services and allows you to file a trademark application with one of the law firms and to apply for Brand Registry with the U.S. Serial Number.

    IPfever does not participate in Amazon IP Accelerator program, but you can go to the program’s webpage via this link.

    We already analyzed the program’s worth in a previous post, but if you need Brand Registry before your trademark gets registered, this is probably your last resort.

    Should I give a chance to Amazon IP Accelerator program?

    My belief, and also the USPTO’s, is that any U.S. licensed attorney can handle trademark registration, if a sufficient time is given. The key issue is how competent and responsible the lawyer is for your case. It can vary from an attorney to another within a firm.

    However, Amazon probably requires the law firms to maintain the quality of the trademark applications, meaning a vast majority of the application should eventually render registration. This gives an incentive to law firms to reduce the likelihood of an Office Action, which gives many clients a reason to abandon their application due to the cost.

    If so, the IP Accelerator law firms should be a better choice than many unethical trademark service companies, especially non-attorney service providers of dubious legality, who often blindly files a high likelihood of refusal application without forewarnings to make money.

    The best method is to contact a law firm, preferably talk to an attorney, and ask trademark questions first. For example, if what you are hearing is nothing but a recommendation to get Brand Search or Brand Review service, then you might want to try another law firm.

    Of course, you can’t never know if a trademark is safe to use, sure to be registered, and so on. Even with Brand Search and Review, it’s never 100%. On the other hand, a competent attorney can provide a general but very helpful overview of your trademark instantly upon hearing about the mark and associated goods/services.

    Why do I need to register my mark/brand/logo with the USPTO?

    I tend to start a free trademark consultation with a saying, you have a right to a trademark when you use it. There are exceptional circumstances such as Intent-to-Use application under which you can file a trademark application before you start to use the trademark. Nonetheless, trademark registration offers registration of an existing rights related to trademark, servicemark, collective mark, and trade dress.

    The registration scheme offers a pre-screening of the alleged rights, including if there are any conflicting marks, and provide notice to the public. This helps businesses can operate with certain expectations that their trademark will be protected. As an incentive, the registered trademarks are given certain enforcement options and heightened legal status.

    That does not mean, you don’t have a right to stop others from misappropriating your trademarks by using confusing names, marks, or logos.

    It is true that federal trademark registration is almost always recommended unless you deal exclusively with a set of preexisting clients. However, it is also recommended that you should do your marker research and find a distinctive name or logo for your product/service. And when you feel ready, you proceed with the registration process in consideration of your business plan and budget.

    On the other hand, if you want to pre-register a name or logo even long before you start actually using the name or logo, let alone your business, then you can always file an ITU application that can hold a name or logo for registration upon your actual use for up to 3 years. ITU applications involve less risk because the trademark examination will be completed before you start using it, so you can more confidently file it yourself.

  • Change Address on TM registration, DIY

    Change Address on TM registration, DIY

    Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.

    First, understand what you’re doing.

    You actually have quite a list of addresses on your trademark registration/application.

    1. Owner’s (domicile) address (or principal place of business)
    2. Owner’s mailing address (USPTO permits you to have a different mailing address than your address over privacy concern; only mailing address is made public)
    3. Address of your Domestic Representative (Domestic Representative acts like a registered agent for a business. i.e. service of process can be made on a Domestic Representative)
    4. Correspondence address (this is either your mailing address or your attorney’s address)

    If you’re shaking your head in disbelief, maybe you shouldn’t do this yourself.

    Next, you need to find an appropriate form.

    You can find any TEAS forms here or on your MyUSPTO portal. But here’s a shortcut: Change Address or Representation (CAR) Form.

    If you don’t have a USPTO.gov account (MyUSPTO), you need to create one. It’s pretty much like creating an account on any website. So, I won’t go into details.

    Let’s fill out the form.

    Page 1

    You might find this first page familiar if you have filed a trademark application yourself.

    A noticeable difference is that you can enter multiple serial/registration numbers at a time. Yes, that means you can change your address on multiple registrations/applications in a single filing. How convenient!

    Put down your serial/registration number in the blank and hit .

    Page 2

    Now, it shows your mark and your information. Make sure you are looking at your registration/application.

    Then, you have this prompt.

    It’s actually asking who you are to this registration/application. You need to be the Owner or the Attorney of Record to make any change of address. Here, we’re assuming you’re doing it DIY, so Owner it is.

    When you press the Owner button, you might see the following message.

    You see this warning because you had an attorney file the application on your behalf. If so, you must “REVOKE” the authority of a currently appointed attorney to do this address change yourself. If revoked, the attorney will be out of picture in regard to the registration/application. Select “Yes” for the “REVOKE” question.

    Also, you might see the 2. “UPDATE” question above as the first question if you did not provide your email address in the registration/application. The USPTO now requires an email address information for every trademark registration, so if you haven’t done this, you must provide one now. Thus, select “Yes” for the “UPDATE” question. You see I’m referring the questions not by numbers but by keywords. The questions, in fact, may be presented in different orders.

    Furthermore, there could be a different set of questions at times. But I won’t go into further details. You need to “REVOKE” the power of attorney before you file anything with the USPTO yourself, but in so doing, you might also need to make some other changes or updates if necessary. But don’t worry, the form is pretty smart, if you, for example, do not revoke the power of attorney, the form will not let you proceed when you click .

    Following pages

    Depending on how many “Yes” you had on the Page 2, you would encounter many more pages for the necessary changes/updates. However, the address you want to change will appear in section as below.

    You see Mailing Address (top third) and Domicile Address (very bottom). If you want to have a separate mailing address to hide your actual address from the public, insert the address you want to receive your mail in Mailing Address field, and then uncheck the box next to Domicile Address as shown below.

    Then, you can type in your address in the blank field. Alternatively, if you don’t mind making your address public or don’t have a separate mailing address, then you should put down your address next to Mailing Address and leave the box next to Domicile Address (shown above) checked.

    Last page

    Now, you need to sign the form and Validate.

    I will assume you want to “Sign directly” here. Simply, select Owner/Holder as shown below.

    Then, fill out the bottom table. Remember, the USPTO recognizes your electronic signature only if it meets certain formality. I suggest you just fill the Signature box with your full name enclosed with / on each side.

    On the above shown, replace “your name” with an actual name of yours. If Tom Cruise was the Owner, it would look like:

    Don’t forget the slashes, and fill out the Signatory’s Position. In most cases, you can simply write down Owner, but as aforementioned, you may be an employee of an business entity Owner. In this case, you can write down your job title. I doubt a company would have a Temporary Worker to do this, but if that is the case, the supervisor should sign the form not the Temporary Worker.

    You’re now set to Validate the form.

    The rest will be breeze. Unlike when you filed a trademark application, this submission does not require fees. So, as soon as you submit the form, you’re done.

    Congrats! You’ve made the address change on your registration/application yourself.

  • Amazon IP Accelerator Program

    Amazon IP Accelerator Program

    Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.

    Are the maximum service fees set by Amazon fair?

    Assuming that the law firms participating in the IPAP charge the maximum fees set by the program, we compared the service charges as below:

    As you can see, the cost savings in non-flat fee structure is significant. Nevertheless, because most Amazon sellers do not have their own lawyers who can do trademark prosecution at a competitive rate, they prefer to find one with a flat fee structure.

    Unfortunately, the flat fees set by the IPAP, or advertised online, do not tell the whole story. Even if reviewed, researched and filed by a professional, a trademark application can be still subject to an office action (“OA”) by the USPTO for various reasons. When the time comes, service providers who set their flat fees too low will try to recoup their actual cost. Note, office actions must be responded in writing however simple or trivial they might be. This really opens the door for unethical conducts by service providers.

    IPfever attorneys handle OA as it should be. If it involves a simple amendment to the identification of goods and services, the cost may be as low as $20. There are attorneys charge flat fees for OA, which do not make any sense because while some OA might require an extensive legal argument to overcome, others may be resolved with a simple email to the examiner.

    Every attorney at IPfever wants to be your long-lasting partner (not a one-time trademark application service provider), and our fee structure as well as the workflow prevent attorneys from taking advantage of clients’ unfamiliarity with the process. That explains the unbelievably low cost associated with an average case at IPfever. In fact, most trademark cases are quite straightforward.

    Request your free consultation today and talk to an attorney.

    • You can find out what you need or expect for trademark registration.
    • You can ask any general question such as if your mark can be registered or used, how much it would cost for you trademark, and so on.
    • Even if you eventually retain the attorney, anything offered during the free consultation stays free.
  • Acceptable identifications of goods and services

    Acceptable identifications of goods and services

    There are good reasons you should stick to the Trademark ID Manual when you describe your goods and services in your trademark application. Picking one outside Trademark ID Manual not only cost you more but also may delay the registration process.

    Why is the description important?

    First, you need to understand there are two different classification systems: (1) the Nice Classification (NCL) and (2) a Trademark Identifications and Classifications Project (or TM5). The NCL is a “compulsory” classification system, which is annually updated and currently lists about 80 international classes (ICs). TM5 is an “optional” classification regime that simply seeks to unite the big 5 intellectual property agencies in the world (obviously the USPTO is one of them).

    Long story short, NCL gives categories and TM5 gives sub-categories. And some sub-categories adopted by the USPTO are yet adopted by all major intellectual property offices, meaning they are okay with the USPTO although not TM5.

    The reason you need to place your trademark in a proper category arises from the very reason you want your trademark registered. As you probably know by now, trademark is quite different from other intellectual properties in that it is not about protecting your ingenuity or creativity but about protecting your goodwill and reputation in the market.

    What this means is that your pretty logo or emblem is protected by the trademark law not because you created it but because you used it in association with your goods/services. If you want to protect your artistic or literary expression, you should seek copyright protection.

    So, why we need appropriate classification? On the paper, your trademark protection likely goes only as far as the IC in which your product/service belongs. For example, you run a bakery named Flew Blast, and someone launches an athletic clothing brand Flew Blast . You unlikely can argue your trademark right is being infringed.

    If you have two or more ICs in which your goods/services belong, you need to file multiple-class trademark application. In reality, you simply list all ICs in an application and pay the application fee multiplied by the number of ICs you elected.

    How to Identify My Goods/Services?

    Once you have chosen all ICs that apply to your goods/services, now you need to tell the USPTO why you selected those ICs. At least one good/service must be entered for each IC in your application, and it can be as many as you like. The thing is that your business is likely dealing with many types of goods/services in an IC. For example, all cosmetics belong to the international class 003 except those having medicinal purposes. The latter would belong to the international class 005 with other medicines.

    It might be tempting to include just every possible goods/service you can find in the USPTO’s Trademark ID manual. After all, it is for no extra charge. However, one of the goals of the USPTO is to allow all rightful owners of trademarks to register their trademarks for protection. Sometimes, even within an IC, there can be instances where quite similar trademarks can be used by two business owners without much conflict or confusion among the consumers. That might be due to no overlapping of potential customers between these two among many other reasons. The identification of goods and services can tell if there would likely be an overlapping of potential customers.

    To deter anyone in bad faith claims all the goods/services within an IC, the trademark examiner at the USPTO may require you to submit more than one specimen per international class. (see below for further discussion of specimen) Potentially, a specimen for each and every goods and services listed. Also, you should know that you trademark registration can be cancelled for your false statement.

    The TEAS allows you to search the Trademark ID Manual while you are filling in the trademark application. So, do a thorough search and find descriptions that cover all the goods and services you provide. Sometimes, you may find just one description covers it all. Other times, you find two descriptions that more or less cover the same goods and services. You do not need to include all descriptions that apply to your goods/services. If one covers it all, select it and move on. If one does not carry all the way, find another one. Just keep going till everything is covered.

    Statement of Use (Allegation of Use)

    Whether you are currently using the trademark or you only intend to use it later, at some point you must prove that you are actually using it. That proof is a specimen. A specimen is usually a photography of a good that bears the trademark. The specimen should show the entirety of the product not just the trademark, which is obvious because you already provided how the trademark looks in the earlier stage of the application. Also, it should show the trademark as it is filed, meaning if you have claimed colors in the application, you photo cannot be a black-and-white one. When it comes to services, you need to find a way to show that your mark is used in association with your service/business. Nowadays, a screenshot of your business website should be your first consideration. Simply find the page that actually selling the services, meaning customers can place an order or find contact information. A screenshot of the webpage, which obviously should show your trademark as well, would be a good and convincing specimen.

    How many specimens do you need? I would go for one specimen for one IC by default. Just think about how extensive your list of goods/services, and you feel you should show more than just one, then feel free to go ahead and include more specimens. The thing is if the examiner wants to see more specimen, they will simply ask you in an office action. You would have 6-months to add more specimen, and once you upload your specimens in the system using the Response to Office Action form, which can be found here, you are all set. You would face some delay depending on how quickly your examiner re-visit your application, but if your goods/services are cohesive and reasonable, it is unlikely that your examiner asks for more specimen.

  • TM Int. Classes (11-2018)

    TM Int. Classes (11-2018)

    Class 1

    Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.

    Class 2

    Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

    Class 3

    Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

    Class 4

    Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.

    Class 5

    Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

    Class 6

    Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.

    Class 7

    Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.

    Class 8

    Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

    Class 9

    Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

    Class 10

    Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.

    Class 11

    Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

    Class 12

    Vehicles; apparatus for locomotion by land, air or water.

    Class 13

    Firearms; ammunition and projectiles; explosives; fireworks.

    Class 14

    Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.

    Class 15

    Musical instruments.

    Class 16

    Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.

    Class 17

    Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.

    Class 18

    Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

    Class 19

    Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

    Class 20

    Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.

    Class 21

    Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.

    Class 22

    Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.

    Class 23

    Yarns and threads, for textile use.

    Class 24

    Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

    Class 25

    Clothing, footwear, headgear.

    Class 26

    Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.

    Class 27

    Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

    Class 28

    Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.

    Class 29

    Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

    Class 30

    Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).

    Class 31

    Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.

    Class 32

    Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

    Class 33

    Alcoholic beverages (except beers).

    Class 34

    Tobacco; smokers’ articles; matches.

    Class 35

    Advertising; business management; business administration; office functions.

    Class 36

    Insurance; financial affairs; monetary affairs; real estate affairs.

    Class 37

    Building construction; repair; installation services.

    Class 38

    Telecommunications.

    Class 39

    Transport; packaging and storage of goods; travel arrangement.

    Class 40

    Treatment of materials.

    Class 41

    Education; providing of training; entertainment; sporting and cultural activities.

    Class 42

    Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

    Class 43

    Services for providing food and drink; temporary accommodation.

    Class 44

    Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

    Class 45

    Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

  • Online Trademark Services: Good or Bad?

    Online Trademark Services: Good or Bad?

    Let’s talk about filing a TM application without any help first.

    There is no doubt that any US person, including legal entity having address in the U.S., can file a trademark application without absolutely no help.

    The government agency handling trademark registration, the USPTO, provides ample resources including video clips to guide you through the process.

    Although the form itself is not as user-friendly as it could be, you can do it yourself without any prior knowledge or experience.

    Nonetheless, it’s not about simply filling the form.

    You ought to consider many things before filling out the application form. From what can be trademarked to how it should be trademarked, there are many questions that you should ask yourself before you start filling out the form. The USPTO provides all relevant information, but you can fill out the form without studying them.

    The thing is that all online fee services that charge flat fees ask you to choose on your own if you want a basic service or a more through service. How are you supposed to know?

    When I prepare trademark applications for my clients,

    I see cases where I end up charging only $200 for attorney’s fees in addition to the then-TEAS Plus fee of $225. That’s about on par with the online trademark services.

    As I internally process all the questions a client should ask and ask the client only what must be answered by the client, the client might not know how much time and money is being saved. Some attorneys charge for those hidden time and money savings. That explains why they are more expensive than those largely automated trademark services via online.

    I tend to talk to clients a lot, and some clients have tons of questions. I think they benefit more from my service. In fact, if you just want it to be filed and move on, you might benefit from automated services as I am not available 24/7.

  • Patent Obviousness Rejection Explained

    Patent Obviousness Rejection Explained

    Obviousness is a very common reason for rejection.

    A grant of patent without a single rejection is quite uncommon. One of the reason is that most applicants want to claim broadest possible for the greatest protection of law.

    Broadening the scope of claims.

    To maximize the scope of your claim, you don’t want to include unnecessary details in your claim. Let’s take a look at an example (from a real patent). You don’t have to read it through, just scheme.

    [an excerpt from US8143982B1, bold added]

    Drawing-1
    always easier to understand the claims with drawings

    1. An accessory unit, comprising:

    a hinge span, the hinge span including a first magnetic element suitable for magnetic attachment to a host unit having a display; and

    a flap portion pivotally connected to the hinge span, the flap portion comprising:

    a plurality of segments all but one of which are substantially the same size and wherein one segment is wider than the other segments, wherein each segment includes a pocket that is about the same size as the corresponding segment,

    a rigid insert incorporated into each pocket, the rigid insert providing support for the associated segment, and

    a folding region between each of the segments arranged to allow the plurality of segments to fold with respect to each other, wherein a first segment is located at a first end of the flap at the hinge span and includes a magnetically attractable element and wherein a second segment is located at a second end of the flap opposite the first end and includes a plurality of magnets, wherein in a first folded configuration the flap portion forms a triangular structure when the first and second segments are folded one atop the other such that at least one of the magnets in the second segment magnetically attract the magnetically attractable element in the first segment, wherein the first and second segments that are folded one atop the other and magnetically attached to each other form one side of the triangular structure that is about equal in width to a second side of the triangular structure each of which is narrower than a third side of the triangular structure.

    [end of claim 1]

    What’s claimed?

    By looking only at highlighted words, you can figure out that it has two main components, a hinge span and a flap portion, and the flap portion has three sub-components, a plurality of segments, a rigid insert for each segment, and a folding region between each of the segments.

    What do you make out of it? Well, it’s iPad Smart Cover by Apple.

    Let’s look into the details.

    A hinge span is described as follows: including a first magnetic element suitable for magnetic attachment to a host unit having a display.

    It doesn’t say a magnet or a tablet PC. Instead, it says a magnetic element suitable for magnetic attachment and a unit having a display, respectively. If it said a magnet, someone can make a cover with a lodestone instead of a magnet and avoid infringement. The same thing goes to the tablet PC.

    But, why not just an element suitable for attachment? I think that would be the track which leads to the obviousness trap. Granted it would expand the scope, it also eliminates an outstanding element from the invention. Every cover has some element for attachment.

    On a side note,

    what about a unit having a display? Why not a unit having a flat surface? Well, Apple is an electronics company, and it probably wouldn’t make a cover for your photo frame. In that sense, a display pretty much is everything that needs to be covered in Apple’s patent.

    Infusing non-obvious elements into claims.

    Skipping forward to the bulky section, a folding region, can you guess why in the world it is so long? Well, you guess it’s important, right?

    This is the section that makes this cover distinct from any other cover design within people’s mind (at the time of invention, of course). It describes how the segments of a cover fold and magnetically bind together to form a rigid stand that can support a host unit. So, you have to describe it fully.

    By the way, a cover that folds into a stand is not an invention by Apple. Search Google Patents “US8960421B1” and you will see a prior patent filed by Incase Designs Corp. that has almost identical folding functionality.

    Let’s take a look at a claim by Incase Designs [excerpt from US8960421B1].

    Drawing-2

    1. A cover for an electronic device comprising:

    a rectangular front cover comprising first, second, and third panels between a first edge and second edge of the front cover, wherein the first panel is closer to the second edge than the second and third panels, the second panel is between the first and third panels, and the third panel is adjacent the second panel,

    between the first and second panels is a first hinge, and

    between the second and third panels is a second hinge;

    a back cover, coupled to the front cover, which will retain the electronic device in the case; and

    [It goes on, but let’s stop here.]

    So, a flap portion of Apple patent can’t overcome an obviousness rejection by itself despite the elaborated manner of how segments fold and get attracted together to form a stand; that’s where the magnetic element for attachment comes into play. This magnetic element obsolete a back cover, which is listed in the Incase Designs’ patent claim.

    Here’s an important question: if Incase Designs knew a way to make a cover without a back cover, would its claim include the back cover element in the claims?

    The fact that Incase Design included the back cover element in the claim supports the non-obviousness of replacing a back cover with a magnetic element.

    You can read more about this in “Including an unnecessary element in the claims.” 

    How to deal with an obviousness rejection.

    After a careful thought and drafting an application, you can still get a rejection based on obviousness. In this case, you can try again, or get help from patent attorneys.

  • How to Write a Patent Application: Specification

    How to Write a Patent Application: Specification

    Patent Specification in your application is the body of your application.

    Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s).  Roughly speaking, it should be an all-inclusive manual for your invention.

    It’s part of the deal you’re making with the public.

    You’re disclosing  your invention to the public, and in exchange you’ll be granted a monopoly for a limited time. To ensure fairness in this deal, you’re required to fully and comprehensibly disclose your invention without hiding anything.

    You should focus on making the invention available to the public. 

    If you want to hide something from the public, you’re free to do so by opting out from disclosing it, in which case you shouldn’t claim it either. However, you shouldn’t attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.

    For example, let’s say you know two ways to make your invention. You know one works better than the other, but you don’t want people know about the better one. If you disclose the other one only, the patent will be held invalid.

    If you don’t claim it now, you may lose it forever.

    You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can’t patent it.

    There’s much more.

    Although you can learn a lot from the patent applications you found during your clearance search, it’s still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don’t need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).

  • How to Write a Patent Application: Claims

    How to Write a Patent Application: Claims

    Patent claim in your application defines your invention.

    And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.

    Read the claims written by professionals.

    By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would’ve noticed the peculiar but consistent writing style.  In fact, you must follow a specific set of rules created by the USPTO when writing claims.

    Pay attention to details including punctuation and spacing.

    You shouldn’t worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don’t be creative and get rejected.

    What about the substance?

    Patent applications often have multiple claims, and a claim likely has a multiple components.

    The wordier the better?

    No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.

    Then, as little as possible?

    That’s another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.

    There’s much more.

    To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes “comprising” and “consisting.” If you say your fuel additive consists of chemical A and chemical B, you are telling that there’s no other chemical than A and B. “Comprising” is, on the other hand, open-ended.

    Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it’s more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn’t take too long.