An Introduction to Trademark & Patent Law Presented by Lindsay Kaplan & Nicki Kennedy Kilpatrick Townsend & Stockton LLP Presented to June 18, 2015 2015 Kilpatrick Townsend
Intro to Trademark Law Presented by Lindsay Kaplan
Trademark Roadmap What is a trademark? What makes a strong trademark? How do you clear/search for a mark? Filing Strategies and tips Enforcing your marks 3
Does this look familiar? 4
What about this? 5
Does this look familiar? 6
And this? 7
Identifying Trademarks A trademark IS: a distinctive indicator of the source of goods or services symbols in the marketplace of your company s goodwill and reputation A trademark IS NOT: a domain name (the internet address associated with a website) or a trade name (the name of the company or organization) www.care.org Cooperative for Assistance and Relief Everywhere, Inc. Unless: The domain name or trade name also functions as a source identifier 8
Examples of Trademarks 9
What makes a strong mark? The Spectrum of Distinctiveness Generic Descriptive Suggestive Arbitrary Fanciful MORE DISTINCT 10
Trademark Myths I registered my business name with the state, so I have exclusive rights in that name as a trademark. I registered my business name with the state, and the state approved it, so I can t be infringing anyone else s rights. I bought the website.com or.org, so I have rights in that mark. Only logos can be considered trademarks. I own a trademark registration, so I own a monopoly on that mark. They didn t file a trademark registration, so they don t have rights. I should pick a trademark that describes my product or service so people know what we do. I should always use the symbol to indicate that something is a trademark. None of these are true. 11
Trademark Clearance Before filing an application or adopting a new mark, search registered and common law marks. Google search to find common law uses U.S. Patent and Trademark Office Records (www.uspto.gov) Saegis Search (also has international databases) http://tess2.uspto.gov/ 12
Trademark Clearance Before filing an application or adopting a new mark, search registered and common law marks. Google search to find common law uses U.S. Patent and Trademark Office Records Saegis Search (also has international databases) 13
Establishing Trademark Rights Federal Registration conveys nationwide rights. Without a registration, rights are territorial and based on use. The first to use a mark in a particular geographic area develops common law rights in that area. Seattle Miami 14
Why Register on the Principal Register? Nationwide rights Presumption of validity and exclusive ownership Protect against registration of confusingly similar mark through PTO practice Nationwide notice of ownership as of registration date (prevents subsequent good faith adoption) Mark is easy for others to find in availability search Use U.S. registration as a basis for obtaining registration in foreign countries Invoke federal jurisdiction Can use the symbol 15
Trademark Applications Federal trademark application filing fees range from $225 to $375 per international class. Examining Attorney reviews application for any deficiency and issues an Office Action if there are substantive reasons for refusal. Once applicant has responded to all issues, the mark is published for opposition and third parties can oppose. If no oppositions mark is registered (if use-based) or issued a Notice of Allowance (if intent-to-use). Typically 12 to 20 Months to Registration 16
Filing Tips TEAS Reg. v. TEAS Red. Fee Applications (TEAS R v. TEAS RF) TEAS RF is cheaper ($275 v. $325/class) TEAS RF requirements: File electronically Authorize e-mail communications TEAS PLUS is less expensive, but gives less flexibility in wording of goods/services
Marking Trademarks Why? Convey to Others that Term is a Mark and/or that it is Registered Enhance Cost for marking: almost zero free Warning regarding ownership How? Place appropriate marker after word, image, etc. indicates that a mark is federally registered indicates that the owner is claiming trademark rights SM indicates that the owner is claiming service mark rights 18
Likelihood of Confusion For clearance and enforcement, we must evaluate whether there is a likelihood of confusion between the marks at issue. In other words, whether consumers would be likely to be confused as to the source, origin or sponsorship of the parties products through their use of their marks Actual confusion? Other similar marks on similar goods? Similar? Marks Likelihood of Confusion? Careful buyers? Related Goods or Services? Similar trade channels? Bottom Line: no absolute rules, very factual case-by-case determination 19
Policing Your Mark Be aware of others using marks that create a likelihood of confusion. Any evidence of actual confusion? Consider subscribing to a trademark watching service. If you find infringement, take action. Send a demand letter and try to negotiate a solution. Litigation is expensive so it should only be a last resort. Be aware of potential public relations implications of enforcement efforts may have to walk a fine line. 20
Domain Names and Trademarks Domain Names are not necessarily trademarks. Most companies use their trademark as their domain name, so it is helpful to register a domain name that contains your trademark to make it easier for members to find your website. Consider registering other generic top-level domain in addition to.org given low cost (e.g.,.com,.edu). 21
Trademark Roadmap Enhancing Protection Identifying Trademarks Registration Marking Trademarks Domain Names Licensing Avoiding Problems Trademark vs. Trade Name Descriptive / Generic Clearance Policing Your Mark 22
Intro to Patent Law: Filings and Prosecution Presented by Nicki Kennedy
Agenda What is a patent? Basic Filing Strategies Checklists Portfolio Management Tips 24
What is a Patent? A patent is a proprietary right granted by the a patent office Patent rights are available worldwide There are three types of patents available in the United States: 1. a utility patent, which covers the functional aspects of products and processes; 2. a design patent, which covers the ornamental design of useful objects; and 3. a plant patent, which covers a new variety of living plant. Right to exclude, not a right to practice! 25
What is a Patent? A Patent is a patent application that has been examiner and granted by a patent office A U.S. patent will have a 7 digit number: 9,123,456 A U.S. application has an 8 digit serial number: 14/123,456 If the application is provisional, the serial number begins with a 6: 63/123,456 A U.S. non-provisional application has an 11 publication number: 2015/1234567 In foreign jurisdictions, different letter codes are generally used to distinguish: A for publication, B or C for patent 26
What is a Patent? Information about the patent application is shown on the front page Additional information, including corresponding applications or priority applications can be found at: http://worldwide.espacenet.com/ 27
Basic Filing Strategies 1. Provisional application: 12 month place holder 2. Non-Provisional application 3. PCT/Paris: 12 months from earliest application 4. National Stage: 30 months from earliest application 28
Provisional Application Checklist Document Required? Notes Disclosure Provisional Cover Sheet Yes Yes Claims No Suggest filing Figures No Suggest filing if applicable Assignment No Suggest filing Oath/Declaration Information Disclosure Statement Fee: based on owner of patent rights Large Entity No No Small Entity (<500 employees, university or non-profit) $260.00 $130.00 $65.00 Micro Entity (less than 4 utility patents; gross income limitation, or majority of income from university) Additional information is available here: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent 29
Non-Provisional Application Checklist Required Document Disclosure Application Data Sheet (if company is assignee or benefit claim) Claims Figures (if applicable) Utility Patent Application Transmittal Fee Transmittal Form Optional Documents that can be filed later Assignment Oath/Declaration Information Disclosure Statement Power of Attorney (for outside law firm) Additional information is available here: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent 30
Non-Provisional Application Fees The fee schedule is available here: http://www.uspto.gov/learning-and-resources/feesand-payment/uspto-fee-schedule Generally, a large entity will pay $1600.00 This includes a $280.00 basic filing fee, a $600.00 search fee and a $720.00 examination fee The fee is dependent on size of entity, number of independent claims and number of dependent claims 3 independent claims and 20 total claims are included in the filing fee An independent claim does not refer to any other claim whereas a dependent claim does. 31
Parts of a Patent Application Disclosure 1. A method of inducing aerobic exercise in an unrestrained cat comprising the steps of: (a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to a cat; and (b) selectively redirecting said beam out of the cat s immediate reach to induce said cat to run and chase said beam and pattern of light around an exercise area. 32
Examination of a Patent Application After a non-provisional patent application is filed, it will first be examined for formalities Substantive examination will then occur (no formal request is needed, unlike in foreign jurisdictions) The filing fee entitles you to receive at least one nonfinal office action and at least one final office action There is no charge for replying to the office actions unless you need an extension of time There are strict rules for amending claims, both procedurally and substantively 33
Examination of a Patent Application Once the claims are deemed allowable, you can pay the issue fee for the application to proceed to grant as a patent To maintain the patent, you must pay maintenance fees at prescribed intervals 3.5 years from grant 7.5 years from grant 11.5 years from grant For a large entity, the fee is: $1600.00 at 3.5 years $3600.00 at 7.5 years $7400.00 at 11.5 years Strategic considerations based on technology 34
PCT Application Checklist Required Document Disclosure PCT Request (Form PCT/RO/101) Claims Figures (if applicable) Fee Transmittal Form Optional Documents Transmittal Letter Fee Calculation Sheet Power of Attorney Fees for a PCT application range from $2000 to 4000 Recommend including claims in multiple dependent form Select International Search Authority Select designated countries (suggest selecting all ) 35
PCT Application Checklist As part of your filing fee, you will receive an International Search Report and Written Opinion These reports will identify if the ISA has found your claims to be: 1) Novel 2) Inventive; and 3) Industrially Applicable You have an opportunity to amend the claims and argue with the ISA If the claims are novel, inventive and industrially applicable, you may be able to accelerate prosecution in other jurisdictions 36
National Stage Entry For most countries, you must enter national stage within 30 months from the earliest priority date Do not wait until the 30th month to decide whether to enter national stage Suggest identifying foreign counsel and working with them at least 2 months ahead of time to allow for timely filing without rush fees for the filing or for the translation Each jurisdiction has different requirements and your foreign counsel can best prepare you for costs associated with filing, maintenance payments (also referred to as annuities), and procedural requests 37
Paris Convention Application Checklist Similar to a PCT filing, the Paris Convention is used for three basic reasons: 1. to expedite a filing 2. if you are only filing in a small number (2-3) of foreign jurisdictions 3. if a jurisdiction that you wish to file in is not a member of the PCT Argentina Taiwan Full list available at: http://www.wipo.int/pct/en/paris_non_pct.html Paris Convention extra requirements: File in each jurisdiction within 12 months of earliest priority claim File a certified copy of the U.S. application File a translation of the U.S. application in the appropriate language 38
Portfolio Management Tips Because of the complexity of the patent system, especially across multiple jurisdictions, keeping accurate records is critical Many companies outsource payment of maintenance fees and annuities Keeping an internal log of filing dates, conversion dates, and statuses is invaluable Excel sheets are helpful for this Evaluate the portfolio often for cost savings and commercial opportunities 39
Questions? Please feel free to contact us with any questions. Lindsay Kaplan Kilpatrick Townsend & Stockton LLP Suite 900 607 14th Street, NW Washington, DC 20005-2018 office 202 508 5821 fax 202 585 0031 lkaplan@kilpatricktownsend.com Nicki Kennedy Kilpatrick Townsend & Stockton LLP Suite 900 607 14th Street, NW Washington, DC 20005-2018 office 202 481 9931 cell 609 346 1095 fax 202 315 0457 nkennedy@kilpatricktownsend.com 40
Thank you! 41