Trademark Renewal & Maintenance - How Do I Keep My Trademark?

After you?ve applied for your trademark, there will be a waiting period of approximately 18 months before your name is actually registered with the United States Patent & Trademark Office (herein referred to as the USPTO). Until then, it will be listed as "Pending." Sometimes there are hold-ups; the USPTO may not allow you to use the name you?ve chosen to apply for because there is a similar name already trademarked. In this case, you will receive an "office action", which is a notification from the USPTO. If you do receive an office action, it might be due to the USPTO simply needing more information in order to complete your trademark application. However, it also may be because your name is blocked by another name, which is the worst case scenario, and another reason why it is incredibly important to purchase comprehensive research before you file for your name!

After your name is registered with the USPTO, between years 5-6 you will file a "Continuous Use Form." This form conveys to the USPTO that you have been using your trademarked name, and you intend to continue to stay in business or to sell your product under that name. After a 10 year period, you will be required to renew your trademark. It is important to be aware that some maintenance is involved in keeping your trademarked name.

It is recommended that each year you commission research on your name. This is done to ensure that no one has begun using your name since doing initial research on its availability. By continuing to do annual research, you are adding a greater sense of protection for your name and business. It is up to you to remain informed on what businesses are using what marks, and how this might affect your own personal business ventures.

Once trademarked, you may take legal recourse if another business has begun using your name. A "cease and desist" letter is a way of conveying to another business that they are infringing upon your trade-name. While you do not need a trademark in order to draw up a letter such as this, having a federally registered trademark gives you a greater ability to disallow the use of your name by another. These documents should always be drawn up by an attorney, rather than an individual, as the action conveys that you are taking legal recourse against another business. Please communicate with the USPTO directly, a trademark attorney OR a trademark research company if you have more specific questions about maintaining your trademark!

Marit Lee is a Researcher for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Marit directly at 800.550.1520.

Patent - Business Method Patents - Part III

In this third article on business method patents we're going to continue our discussion with legal requirements for getting a business method patent.

In order for a company or individual to get a business method patent, the business method or software must meet the following requirements:

1. The method or software must be on a subject matter that the patent office defines as patentable. This is said to be anything created by humans that falls into two classes; laws of nature, natural phenomena and abstract ideas.

2. The method or software developed must be of some practical use. This is fairly easy to satisfy because any functional purpose will be good enough. A business only needs to demonstrate that its method or software produces some tangible result. For example; Amazon.com with their 1-click purchase produces a tangible result, an expected purchase.

3. The method or software must be novel. In other words, this method or software must be noticeably different from anything else that has come before it.

4. The method or software must be what they call "non obvious." What this means is that somebody who has ordinary skill in that specific technology would not have been able to think of it.

The cost of getting a business method patent depends on a number of factors, including the actual subject matter of the patent, how complex the examination process needs to be to determine if it is a new idea and whether or not the process goes through a lawyer. The cost for getting a business method patent can be anywhere from $3,000 to $15,000 unless you go through the process yourself without hiring a lawyer. After the patent is issued, the owner of the patent must pay maintenance fees to the U.S. Patent and Trademark Office after 3.5, 7.5 and 11.5 years. If the patent should be challenged, and many are, costs for getting the patent can go through the roof.

The next legal requirement for getting a patent is novelty. An application for a business method patent will fail the novelty test if the method was in use for more than 1 year before the patent was applied for. It is because of this novelty requirement that a company must research whether this method already exists and if not, file for a patent as quickly as possible.

A business method is considered to be novel when it is different in at least one area from all prior methods. This is known as "prior art." Prior art consists of the following as per the USPTO in these exact terms.

1. "Any published writing (including any patent) that was made publicly available either: (1) before the date of invention of the business method or (2) more than one year before the patent application for the business method is filed."

2. "Any U.S. patent that has a filing date earlier than the date of invention of the business method."

3. "Any relevant method or process (whether described in writing or not) existing publicly before the business method was conceived."

4. "Any public or commercial use, sale, or knowledge of the business method more than one year before the patent application for the business method is filed."

Finally, as to the timeline for obtaining a business method patent, it takes two and a half to three years to get a business method patent from the date it was filed. The patent is valid for 20 years after filing. After that it becomes public domain and anyone can use the method.

Michael Russell
Your Independent guide to Patents

Google Patent Application Linking

The recent patent application filed by Google details numerous items the search engine uses to rank web pages. The specific application is summarized as:

The recent patent application filed by Google details numerous items the search engine uses to rank web pages. The specific application is summarized as:

A method for scoring a document, comprising: identifying a document; obtaining one or more types of history data associated with the document; and generating a score for the document based on the one or more types of history data.

The patent application sheds significant light for those pursuing search engine optimization with Google. Patent applications can be difficult to understand, so following are highlights for those that don't speak lawyer.

Googles Link Evaluation

It is well known that Google uses links as a significant ranking element. Although the patent application doesnt dispute the value of linking, it does highlight the best method for pursuing a linking strategy. Simply put, consistently adding links will have a much better effect than adding links in bunches.

Google notes in the patent application that it looks at links from a historical perspective. The search engine notes the discovery date of links, the life span of the link and the speed at which a new web site obtains links. This approach reveals that Google is discounting quick link exchange strategies such as buying bulk links for your site. Instead, Google appears to consider a natural linking evolution as a sign that a site is legitimate.

The specifics of a good linking strategy are a bit difficult to nail down. In the patent application, Google tries to hide the evaluation method by listing factors that might go into evaluating links to a site. Factors that might be considered include:

1. The anchor text of the link.

2. The discovery date of the link.

3. The growth rate of links to your site.

4. The rate at which links to a page appear and disappear.

5. The age of links with older links carrying more value.

6. Numerous links to a new site will be looked at as spam, unless some of the links are from highly valued sites.

7. Link growth that is constant is optimal.

8. Sudden bunches of new links will be devalued as spam.

A general theme becomes clear as one reads the Google patent application. Google values sites that are in it for the long term, update regularly and consistently grow in link popularity. Taking this theme into account, it is easy to understand why the Google sandbox exists.

A steady approach is the key if you intention is to gain top rankings in Google. While the delay can be aggravating, the results are certainly worth it.

Halstatt Pires is with http://www.marketingtitan.com - an Internet marketing and advertising company comprised of a search engine optimization specialist providing meta tag optimization services and Internet marketing consultant providing internet marketing solutions through integrated design and programming services.

Trademarks - A Quick Introduction

With the combined advent of the internet/dot-com boom and the prevailing trend of individuals going into business for themselves, the focus and importance surrounding intellectual property has been in the forefront of the minds of entrepreneurs, artists, inventors and anyone wanting to protect the fruits of their labors.

Because intellectual property and the laws therewith can change as rapidly as our ever-increasing technological world, it is imperative that when doing research on these topics to use accredited resources ? contact either the appropriate governmental agencies, attorneys or private companies that specialize in these topics.

TRADEMARKS :

Trademarks are frequently thought of as those items that identify either a product or a service. This can include names of services (e.g. McDonald?s ? for restaurant services) or products (e.g. Coca-Cola ? for soft drinks), logos (e.g. Nike?s ? swoosh design), slogans (e.g. American Express? ? Don?t Leave Home Without It ?), packaging, sounds and smells.

There are over 2,500,000 Trademarks, and over 16,000,000 commercial Common Law trade names in use! An existing Federal Trademark, State Trademark or commercial Common Law use can take precedence over your new business or product name, IF there is a conflict or similarity in sound, appearance or meaning!

SIMILARITIES IN SOUND, APPEARANCE & MEANING:

What exactly is a similarity in Sound, Appearance or Meaning? This is the most complex portion of any legal name research. In order to determine what may or may not be a similarity, one has to be as open minded as possible to include any & all variations that could possibly confuse the common consumer. Some examples may help with this:

1. Joe has a pending Federal trademark for his auto detailing service called It?s in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance, their crossing of trade areas & Joe?s pending Federal application.
2. Mary has a Federally registered trademark for her clothing line, Scary Mary?s Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary?s Federal registration.
3. Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.
4. Lorena?s online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

No claim is made to the ownership, knowledge or liability of the above personal and/or company names. The above examples are merely for informational purposes and should only be seen as such.

Naturally, there will be exceptions to every situation. For instance, similar trademarks (in name and goods/services) can coexist peacefully if both parties are comfortable with one another?s existence. This can happen if trade areas do not cross (e.g. located on opposite coasts), if they appeal to different consumers (e.g. one sells to private industry while the other sells to the general public), etc.

FAMOUS TRADEMARKS:

Trademarks that are famous are afforded slightly different protection based on the very nature of their recognizability. Simply, the argument for famous marks is that since their brand name is recognized by a vast majority of consumers, any marks similar to it, even in different industries, could be construed as an infringement. The main justification for this is if "the owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person?s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."

Of course, like with all trademark issues, there are gray areas. Each potential infringement is taken on a case by case basis. Not all cases end up favoring large corporations either. Take the famous case of Victor?s Secret & Victoria?s Secret (Moseley et. al. d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al.), in which the smaller company won their case.

The best route to take if there is a possibility of an infringement, famous mark or not, is to speak to a trademark attorney. She will assist you in determining what the next best step is as well as offer assistance with any preparation and filing of documents.

SUMMARY:

While trademark law can be intimidating to the uninitiated, obtaining the help of a trademark attorney or an experienced private company will make the entire process go much smoother. There are preliminary steps one can do when starting a business and/or renaming a business:

1. Choose a name that is unique & distinctive ? generic or descriptive names are not generally allowed registration by the USPTO and are more difficult to enforce.
2. Do as much free research as you can before hiring an attorney or a private company. Check the internet, yellow pages, domain names & the USPTO.
3. Be aware that any research you do for free online is merely preliminary and only comprehensive research will tell if the name is available.
4. Once you receive the trademark, it is your responsibility to enforce your trademark rights. To do this, either have research conducted every 2-3 years OR hire a monitoring service.

Link to Above Quote

Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at http://www.tmexpress.com.

Trademark Infringement Against Newly Formed Businesses

Many years after forming a new business, your company may receive a letter telling you that your company?s name is infringing upon another company?s name. This could lead to either your company being forced to change its name or undergo litigation. In Illinois, a corporation or a limited liability company registered with the Secretary of State can have a name similar to a company located outside the state. This then leads the prevention of trademark infringement up to the company itself or a corporate attorney.

You will need to obtain a trademark in one of two ways. First, your company name can be registered in the Federal Trademark System. By doing this, you would have exclusive control over that name for usually a 10-year period, which can be renewed every 10 years. If anyone uses a ?confusingly similar? name, this is trademark infringement. Second, you can enforce your mark, within your territory, based on common law. Your territory could be considered a geographical area where your name has become familiar with your particular goods or services. However, a company in Washington State could have the same name as a company in Illinois.

When you organize your company, a thorough search is needed to be sure your new company name is not already taken. First, Federal trademarks can be searched. Also, a TESS (Trademark Electronic Search System) search on the internet is needed. Visiting a Patent Library in Illinois can be done as well. Finally, a private firm can be hired to do a search for you. To search for a case law trademark, look at the Secretary of State?s website, phone directories, or other legal databases. You may also consider registering an internet domain name to both protect your company?s name and use it for marketing purposes.

Nicolosi & Associates - Attorneys at Law Since 1948. Skilled in the law. Experienced in business. http://www.nicolosilaw.com

Yahoo to Prohibit Competitive Keyword Bids Containing Trademarks

Yahoo Search Marketing (searchmarketing.yahoo.com) has recently announced its advertisers of a new policy to be implemented as of March 1st 2006, concerning the use of trademarks within their products and services *.

Under the new policy, no reference to a trademark can be made (except for ads placed by the trademark owners themselves, obviously), and consequently no bids can be make for keywords containing such trademarks. Exceptions refer to usage of trademarks in non-competitive ads, such as those made by re-sellers, or in informative (and still non-competitive) ads.

The previous policy allowed references to competitors' trademarks and comparisons as long as they were "objective and informative" - the formulation makes me cringe, as it is clearly troublesome trying to evaluate one's objectivity when speaking of business competitors. As for the "informative" side of it... the probability for someone to actually PAY for an ad to be informative of someone else's product/service, that's as believable just like the existence of Santa Claus.

It is really good to see Yahoo making a big step forward in regulating abuse and misuse of trademarks, even though that probably translates in some revenue loss for them, by having certain advertisers migrate to a "friendlier" place such as Google. According to Google's policies, "[...] advertisers may select trademarked terms as keywords or use them in the content of the ad. As a provider of space for advertisements, Google is not in a position to arbitrate trademark disputes between advertisers and trademark owners. As stated in our Terms and Conditions, advertisers are responsible for the keywords and ad text that they choose to use. Accordingly, Google encourages trademark owners to resolve their disputes directly with the advertiser, particularly because the advertiser may have similar ads on other sites. However, as a courtesy to trademark owners, Google is willing to perform a limited investigation of reasonable complaints."

The question is why would Yahoo change its policies and apparently offer Google an even bigger bite from the SEM cake? It is way too early to say now, and their official explanation is not entirely believable: Yahoo states to have had the users' best interest in mind, by providing them with a better experience when searching terms that contain trademarks. Though this would make a laudable initiative with a good PR potential, experts know the search market is driven by large publishers and advertisers and not by the little surfing guys. Numerous speculations can be made: threats of large legal actions from trademark owners, pressure from certain groups of interests are among the most vehiculated ones. However, a more plausible one is that Yahoo makes preparations for a much larger scale movement destined to influence the market in a manner we cannot anticipate just yet.

Until further industry news, there's one thing to rejoice: from now on, no "better than Botox" ads on Yahoo and their partner sites!

* - the products and services covered by the new policy are: Sponsored Search, Local Advertising, Search Submit, Product Submit, Travel Submit and Directory Submit.

Otilia is a young certified professional with expertise in e-Marketing and e-Business, currently working as independent consultant and e-publisher. She has recently launched MarketingWHO.com, a professional Marketing Directory and blogs at The Marketing Journal.