Trademark Considerations to Protect Your Name

In Trademark Law; first use is the key, but still you need to document this and get a trademark at the Federal Level or a service mark at the state level. Without it you may find a bigger firm moving into your area, which had used your name in interstate commerce prior to your local use and thus they can make you change your name.

Imagine the cost in changing all your signage and disrupting your good will with your brand name in your local market. This confuses customers and puts a question mark about your credibility where none had previously existed.

How hard is it to get a trademark? Well not so difficult once you do a search to make sure no one else is using this name or a similar symbol elsewhere. Generally service marks or trademarks are searched by category and so if you are in a cross-over type category or straddle several SIC codes it makes sense to search it thoroughly and find a competent patent and trademark attorney to do it correctly.

If no one challenges you during the initial term of your trademark you can file for a permanent trademark so be sure to ask your trademark attorney about this also. Protect your logos and business name, as it is not worth the risk if you have a successful and on-going business to allow this to slide. Think on this in 2006.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.

Free Trademark Searches

Before filing for trademark, it is a good idea to search for information such as Trademark Acceptable Identification of Goods and Services, Trademark Manual of Examining Procedure, Design Code for the logos and images. With these guidelines, you can make certain the trademark you are developing is unique. It can also help you avoid any trouble or violations not only on the possible similarities on existing trademark, but on violation of standards that have been set.

When you file for a trademark with the United States Patent and Trademark Office (USPTO), there are many considerations you have to make to ensure the uniqueness of your trademark. Conventional things to consider are the name, word or phrase, the logo, symbol, design or images used in your trademark, making sure they are distinct from any of the existing trademarks out there. The main concern of the USPTO is to look for possible copyright infringement that your application may incur and to find ways to reject your trademark. With this risk at hand, it is best to search for trademarks existing and under application. There are free methods available for you to search for trademarks.

The Patent and Trademark Depository Library (PTDL) keeps records of patent and trademark materials within the United States of America at your disposal. They are also tasked to disseminate information involving patents and trademarks. You can go to the depository to manually check for whatever details you may need regarding trademarks or patents.

If there are other details, like laws or frequently asked questions you may need, you can visit the USPTO website to retrieve information they have posted. You can search for queries regarding trademarks, patents and copyrights. There are also news and articles related to the matter available , and you can use the Trademark Application and Registrations Retrieval (TARR) to search for the status of applications.

Trademark Search provides detailed information on Trademark Search, Free Trademark Searches, Online Trademark Searches, US Trademark Searches and more. Trademark Search is affiliated with Free Patent Searches.

To Successfully Enforce Your Patent Do Not Let Form Triumph Over Substance While Writing The Patent

Chemical and pharmaceutical companies protect their investment in research and development and the future of the companies by securing patents on their inventions. Patents help you resist competition. Success or failure of the company often depends on the strength of the patent. The words in the patent document must meet rigid formality requirements under the patent laws. Even if the invention covered by the patent is a fantastic one, the court will throw out the patent if it violates any one of the formality requirements.

The patent document is normally divided into several sections, for example, one section describing the background of the invention, another section describing the invention as a summary, another section describing the drawings of your invention, yet another section describing in detail how to make and use the invention, and a final section that lists various aspects of your invention in numbered sentences, typically from 1 to 20. These numbered sentences or claims form the most important section of the patent.

It is the claims that define the invention. When a competitor wants to design around your invention, he will look to the language of the claims. When you sue someone for infringing your invention, the court will look at the claims in your patent. It is clear that the claims are of paramount importance.

The patent contains independent claims and dependent claims. Dependent claims will refer back to an earlier claim. Independent claims do not refer back to any other claim. For example, dependent claim 2 will refer back to independent claim 1. When dependent claims refer back to other claims, they should meet certain rigid formality requirements, one of which is that the dependent claim cannot be broader in scope than the claim it refers back to. Thus, for example, if claim 1 describes a drug in acid form or its salt form, claim 2 can describe the drug in salt form. However, if claim 1 describes only the acid form, claim 2 cannot describe the salt form. If it so describes, then claim 2 will be broader than claim 1, which is forbidden under the patent laws.

In a recently concluded battle between pharmaceutical giant Pfizer Inc. and generic drug maker Ranbaxy Laboratories, the generic drug maker was able to knock out a patent that covered the blockbuster drug Lipitor. The patent claim that Pfizer asserted against Ranbaxy was held invalid by the high court. Here, Pfizer asserted claim 6 describing a calcium salt of the drug against the opponent. Claim 6 referred back to claim 2 which described an acid form of the drug but not the salt form. The high court held that claim 6 cannot properly refer back to claim 2. The harsh result faced by Pfizer is somewhat surprising because it was believed by many that a court would not look at the form over substance, just as the lower court did. The lower court was reluctant to find fault with the patent claim.

The high court opinion emphasizes the fact that filing a winning patent requires careful consideration of various legal concepts including the intricate formality requirements of the patent law. Copyright 2006

Dr. Xavier Pillai specializes in patent law matters involving chemistry, pharmaceuticals, biotechnology, and polymers; see http://www.leydig.com/Attorneys/AttorneyDetail.aspx?AttorneyID=160.

To Crush Your Competition A Strong Patent Is Important Learn How and Why

Chemical and pharmaceutical companies protect their investment in research and development and the future of the companies by securing patents on their inventions. Patents help you resist competition. Success or failure of the company often depends on the strength of the patent and the longer the term of the patent, the greater will be its value. A strong patent is one that defines your invention broadly and but at the same time builds in fallback narrow invention.

The United States Patent and Trademark Office receives hundreds of thousands of patent applications each year. In fact, the Patent Office has recently proposed new patent rules to ease the Examiner workload. According to one proposed rule, if a patent application is rejected, to be able to present your case again, the patent applicant will be limited to filing one request for continued examination (or RCE). In light of the new rule, unless the patent applicant masters the complexities of patent law, the applicant might end up getting a weak patent instead of a strong one.

Imagine you have filed a patent application where you have defined your invention broadly as well as narrowly in ten succinct sentences in what are known as patent claims. These patent claims will be numbered 1 through 10. Typically claim 1 will represent the invention of the broadest scope, and the higher numbered claims represent fallback narrow inventions. In our hypothetical, claims 2 to 10 will refer back to claim 1. Thus, claim 2 refers back to claim 1. Claim 4 refers back to claim 3, which in turn refers back to claim 2. Claim 5 refers back to claim 1 or claim 4. In this example, say claim 5 refers back to claim 1. Keep in mind that the more number of fallback claims you have, you have a better chance of winning the lawsuit in the event your competitor challenges your patent.

Now imagine that the Examiner rejects the patent, as it often happens, stating that the invention is not new or is only a minor modification of what is known already. You, as patent applicant, have a chance to respond to the Examiner. You present arguments stating why the invention is new and not obvious and why you should granted a patent. The Examiner rejects your argument. Now, to continue your effort to get a patent, you wish to present new arguments. To do so, you may have to file an RCE (and the fee) along with the new arguments.

The Examiner takes it up again. This time, the Examiner softens a little and says, in a non-final rejection, that invention of claims 4 to 10 would be allowable as a patent if you rewrite claim 4 without a reference to claim 1, but continues to reject the broader invention of claims 1, 2, and 3. You now have a choice of taking what the Examiner gave you, that is, claims 4 to 10 or alternatively, argue some more. You choose to argue. The Examiner finally rejected your application, repeating what he said before, that is, claim 4 onwards would be allowable if you rewrite it as indicated before. Now, the options you have are very limited. You can rewrite claim 4 as the Examiner indicated, as new claim 1, and obtain a patent with new claim 1. However, you will not be able to get a patent with claims 5 to 10.

The Examiner would refuse to grant claim 5 to 10 because he will say that claim 5 now has been changed in its scope even though you did not change the wording of the claim. The Examiner will argue that original claim 5 referred back to original claim 1. Now, claim 5 refers back to new claim 1, which is of a different scope. The Examiner would indicate that, as the scope of the claim has changed, he would need to carry out further search and examination on claims 5 to 10. He would say that the patent law would not allow him to do so since the rejection has been made final already. The only way to get the Examiner moving on this would be if you could file an RCE. However, you have already used up your RCE option. You cannot file another RCE now, and therefore, you cannot get claims 5-10. You will get a patent with just one claim. If an infringer challenges your patent, and proves that your only claim is invalid, your entire patent would be thrown out.

If you had rewritten claim 4 (as new claim 1) when responding to the non-final rejection, rather than when responding to the final rejection as you did, patent law would have allowed the Examiner to carry out further search on claims 5 to 10, and the chances of getting those claims would have been favorable. If you had fallback position of claims 5 to 10 also, you would have a greater chance of winning the case. Copyright 2006

Dr. Xavier Pillai specializes in patent law involving chemistry, pharmaceuticals, biotechnology, and polymers; see http://www.leydig.com

Do You Need a Registered Trademark?

It's less of a need than a want. Registering a trademark is NOT mandatory. However, are you a business owner, or do you work with a business that does not currently have a trademark registered or pending with the USPTO? If this last statement in any way describes you, then YES, you may benefit from having a trademark. It is true that many businesses do not register a trademark with the USPTO, but this puts the business at a great disadvantage when compared to another company that does have a trademark.

Having a trademark notifies an individual that you have the corner on your market. It allows you to take court action if another business does attempt to infringe upon your name. You are essentially protecting your market upon registering a trademark by publicly individualizing your name. This protection allows a greater piece of mind for the average business owner, by ensuring that no one may interfere with your customer base by confusing their business with your own. The last scenario is a common occurrence, and many individuals have been forced to deal with legal repercussions because they did not take the time to trademark their name, while a competing business did.

Think about it like this; if your name was Tom Smith and you were a hard-worker, while there was another Tom Smith who was a poor worker, you wouldn?t want to be confused with that other individual, would you? As I mentioned above, this confusion is a common occurrence among businesses. This is why it is important to protect your name, and your products or services! While it is ultimately up to each business owner whether or not they want to protect their name, be aware of the potential ramifications that can come with not applying for a trademark. Whether or not your name is trademarked could have the ability to make or break your business; so why wouldn?t you apply for a 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.

Legal issues about Trademarks and Domain Names

Trade marks are a name or symbol that are used to distinguish the goods of services of a particular company from others.

Similar to copyrights and other signs of intellectual property, the effects of the trademark system is territorial. This means, that each country has its own trademark system. A brand name like Machine Head may be owned by one person in the United Kingdom and by another, totally unrelated, person in the United States.

The domain name system, which is putting most of its emphasis on the .com title as the international domain, does not really jive well with the trade mark system because of the latter's fundamental definition of "ownership."

A case in point is the Prince vs Prince suit. Prince, the US-based manufacturers of sports goods, challenged the use of the www.prince.com domain name by a British computer consultancy company. The said company registered the domain in good faith and have been using it. The Prince sports goods company, which has no registered UK trademark, threatened to sue the British company for US trademark infringement. The latter counter-sued in the UK for the unwarranted threats regarding trademark infringement. They eventually won and the US company had to contend with just using the domain name www.princetennis.com.

Alternatively, a different scenario where the trademark owner will most likely prevail over a domain name holder's rights is in the case of Marks & Spencer vs One in a Million. This particular case was elevated to the English High Court in 1997 when various trademark holders, including the world-famous UK retailer Marks & Spencer, sued One In A Million, a company who accumulated a number of domain names under the well-known trademarks like Sainsburys, Virgin, Marks & Spencer, and Cellnet. These domain names, and others, were bought with the express goal of selling them again to the trademark owners. The High Court decided that One In A Million be required to relinquish their claim on the said domain names. This decision was further upheld by the Court of Appeal.

The One In A Million company's basis of argument was that domain name registrations were first come, first served", thus, the trademark owners do not have any rights to the domain names.

Based on the two actual court cases we can build up a clear picture about the interrelation of trademarks and domain names.

In general, domains that have no trademark significance can be acquired by the entity who registered them first. Continuous use of this non-trademarked name will allow the holder to build a reputation on the name. When the situation is between to legitimate companies who have a right to the name then, as with the stipulation of most laws in most countries, the first person who registers will get the domain. However, a registrant to a domain that is also a subject of a trademark and who does not have any entitlements is going to be forbidden based on the laws of most countries. For more information please visit http://www.dolphinformations.co.uk