Business and Tax Lawyer Blog

Most business owners already know that protecting their trade names, products and ideas with patents and trademarks provides protection from unfair competition. A recent study shows that they can also lead to higher profits for the trademark and patent holders.

Patents and trademarks allow companies to confidently outsource production for cost savings, without fear of losing their intellectual property to an unscrupulous production partner. They also allow businesses to sell their products in wider domestic or international markets for a higher price, compared to other products without the same distinction. Having a trademark or patent can also help differentiate a product from others on the market to attract more buyers.

Licensing allows business owners to expand their operations by selling permission to use the company's trademarked or patented property to other companies; patents and trademarks provide the foundation for successful licensing agreements. Trademark and patent registration is a complex process that requires the assistance of an experienced attorney. If you have a trademark or patent idea you would like to register, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about how patents and trademarks can help you earn more money at Better profits tied to getting patents and trademarks.

New York City announced in October 2009 that it would be taking steps to assert its legal right to the name "Tavern on the Green." The name belongs to a world-famous restaurant, situated in New York City's Central Park and was reportedly appraised at $19 million. The license to run the restaurant is granted by the City of New York.

After the restaurant's concessionaire, the LeRoy family, declared bankruptcy earlier this year, the city went about looking for a new restaurateur to take over the license. At the time, the request for proposal stated there was no authority to pass along the name Tavern on the Green" along with the license. The city then decided to challenge the LeRoy family's claim to the trademark in bankruptcy court.

The restaurant was originally named by Robert Moses, the parks commissioner, in 1934. Warner LeRoy trademarked the name in 1973, without challenge by the city. The LeRoys claim that they have proof of the legality of the original trademark, as well as proof that they have spent money to defend the trademark against other restaurants.

In response, the city decided to register the name "Tavern in the Park" as a backup name for the famous restaurant. However, in December, an examining attorney for the Patent and Trademark office issued an opinion that the name was essentially too generic to be considered a trademark. Owners of the "Tavern on the Green" trademark also charged that the proposed name was confusingly similar to their mark. This dispute highlights the value of a good trademark, as a business asset in selling a business and the need to register and maintain that trademark by defending it from use by other businesses.

Find out more about this story at A $19 Million Question.

Continue reading "New York, NY - Questions about who owns the $19 million name "Tavern on the Green"" »

A rule has been issued that rescinds regulations that limited the number of continuing patent applications and number of claims that could be included within a patent application.

Previously, USPTO rules had allowed applicants to file unlimited continuing applications, requests for continued examination, and claims. New regulations, enacted under the Bush administration in August of 2007 were considered by the biotech industry to unfairly limit their ability to protect their intellectual property. Biotech firms rely on continuing patent applications more than other industries.

The regulations in question never actually came into effect, as an inventor named Triantafyllos Tafas sued the USPTO for overstepping its authority almost immediately after the regulations were proposed. GlaxoSmithKline also filed a complaint against the USPTO. Many other organizations, including BIO, the Pharmaceutical and Research Manufacturers of America, and the American Intellectual Property Law Association filed amicus briefs in support of the complaint filed by GlaxoSmithKline. The case was still being litigated when the newly-appointed Director David Kappos decided to withdraw the regulations.

In deciding to rescind the rules, the USPTO has taken a step toward allowing biotech firms the patent protection they need to promote research and innovation.

Find out more about this story at USPTO Rescinds Controversial Patent Rule Changes Proposed by Prior Administration.

Continue reading "US Patent and Trademark Office Rescinds Controversial Biotech Intellectual Property Regulations" »

The American Civil Liberties Union (ACLU) has filed suit against three parties to a patent that covers genetic testing for breast cancer. The patent is held by the University of Utah, which licenses it to Myriad Genetics. They are both named in the suit. The third party named in the suit is the US Patent and Trademark Office (USPTO) itself, for issuing the patent in the first place. All three defendants filed motions to have the case thrown out. New York District Court Judge, Robert Sweet, has ruled that the case may proceed to trial.

The background of the case surrounds the discovery of mutations of the BRCA1 and BRCA2 genes, which were identified by researchers at the University of Utah as markers of high risk for breast and ovarian cancer. The University patented this information and licensed it to Myriad Genetics, which has attempted to stop academic researchers from sharing research results gained through use of this information.

Patent suits usually challenge on the grounds that a patent was awarded despite the fact that the discovery did not meet patent requirements of being new and non-obvious. The suit by the ACLU is unusual, in that it challenges the whole notion of awarding patents for genes as unconstitutional. The ACLU asserts that patents should not be allowed to grant ownership rights over "products of nature, laws of nature, natural phenomenon, basic human knowledge and thought." They also claim that the potential of the patents to stifle further research is unconstitutional as well; section 8, clause 8 of the constitution directs congress to "promote the Progress of Science and the useful Arts."

Now that the motions for dismissal have been denied, the defendants will have to submit arguments against a summary judgment in the plaintiff's favor. The outcome of this dispute will have long-lasting implications for gene-based health care and for the future course of biomedical research. Find out more about this case and its implications for biomedical research, by visiting Judge refuses to block lawsuit over patenting genetic tests.

If you have a business legal issue, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Department of Justice has announced the formation of a task force that will focus on fighting US and international crimes committed in relation to US intellectual property. The task force will work closely with state, local and international law enforcement agencies. It will also closely scrutinize current intellectual property enforcement activities as well as look at the the links between international intellectual property crime and organized crime.

The recently created Office of the Intellectual Property Enforcement Coordinator, which reports to the President of the United States, will look to the task force to offer recommendations on fulfilling its mission of creating a strategic plan for handling the evolving landscape of intellectual property protection.

Intellectual property crimes include the creation and selling of pirated and counterfeited digital media, luxury apparel, auto and airplane parts and even medication and infant formula; the market for these good is said to exceed $200 billion in the US alone and poses a significant public safety risk.

In the past, the large number of agencies involved in monitoring and enforcing intellectual property laws have made decisive action difficult. It is hoped that this new task force will help streamline and concentrate these efforts. View the full article about the new task force and its responsibilities by visiting Can US get tough on intellectual property crime?

If you have a dispute with respect to intellectual property, please contact Wood, Atter & Wolf, P.A. for patent, trademark and copyright legal counsel.

A new patent awarded to Google has sparked a media debate over Google's intended use for the software method in question. The patented method allows Google to selectively restrict content based on a variety of parameters, including geographic location. This has led some to believe that Google may be trying to censor certain content in specific countries, which is something Google has taken a stand against in their ongoing war of words with China. But a closer look at the wording of the patent would seem to imply that the new software method is more about protecting Google from copyright infringement in relation to its new book scanning initiative. In fact, the major use case presented in the patent describes a system where the accessibility of scanned reading materials is either restricted or limited to certain passages based on user access privileges that are based on local copyright laws. This step is necessary for Google because of a lack of consistency in copyright law and Fair Use Doctrine from one country to another. What is considered public domain or fair use in one country may spark a copyright infringement lawsuit in another. The new patent appears to have been designed to help Google remain compliant with copyright laws around the world. You can read more details by visiting Google content-filter patent about copyright, not censorship. If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with a patent application or copyright protection, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Patent and Trademark Office recently awarded Man & Machine with rights to the name “Mighty Mouse” to refer to the company’s “cursor control devices.”

Man & Machine won the rights despite the fact that CBS had actually filed for the trademark six months earlier. During this same time period, Apple was also using the name for its own computer mice. In a bold move, Man & Machine actually sued Apple and CBS for trademark infringement the same day that they filed the application with the US Patent and Trademark Office. CBS and Man & Machine settled the dispute out of court. As part of the settlement, CBS abandoned its registration, allowing the Man & Machine registration to be approved without further complications.

This story shows how important it is to protect your company’s trade names, and to do so as soon as soon as possible in the development process. Changing the name of a product after you have already spent considerable time and money on developing and marketing it is an unnecessary setback that can be avoided with a proactive approach to registering trademarks.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for expert legal counsel.

Find out more about this story at Mighty Mouse trademark awarded to Man & Machine, Mister Trouble can stop hanging around now.

United States Patent and Trademark Office (USPTO) director, David Kappos, has announced that his organization will be rolling out a program designed specifically to aid small and medium businesses in obtaining patents more quickly. He attributed the decision to his belief that the USPTO needs to maintain a strong relationship with small innovators. Specifically, the USPTO has designed a program that will fast-track the patent process for independent inventors.

The program will only be offered to small and medium sized businesses, and will have the added effect of easing the backlog of patent applications at the USPTO. Under the program, companies can take advantage of the new, accelerated status only by abandoning currently unexamined applications that they have already filed. The USPTO believes this will help small and medium businesses self-select which patent application are the most important to them.

Kappos stated that the USPTO would work simultaneously to streamline their approval processes to further relieve the backlog. Kappos also said that he is eager to hear opinions from independent investors on how to make the patent system work better for them. He will be working in tandem with the US Congress to institute patent reform.

A level playing field for small and medium businesses when it comes to patents will provide an incentive that promotes innovation. You can read more about the patent reforms and how they will impact small and medium businesses at USPTO in small business patent pledge.

If you have an idea for a patent, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Coach, a luxury brand handbag maker, has sued Target Corp., America’s number two retailer, for selling a knockoff purse that appeared to be an exact copy of a Coach handbag design. The bag in question displayed the signature “C” logo and a copied version of Coach’s distinct tag. Target claims to believe that the handbag was a genuine Coach product. Coach is suing Target for trademark infringement.

Trademark infringement is the use of another party’s trademark without authorization or license. Infringement can include use of a mark that is either identical or confusingly similar to an existing trademark. In a case where the trademark is not copied exactly, the court will determine if there is a likelihood of confusion among consumers, leading them to believe that the item was produced by the rightful trademark holder.

If you believe that your trademark may have been infringed, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Coach sues Target for $1M.

Small companies that are trying to attract investors have historically relied on their recorded patents to protect their inventions while disclosing information. But according to the US Patent and trademark Office, it takes an average of thirty four months – almost three years – to get a patent approved. There were more than 1.2 million patents pending at the end of the 2009 fiscal year.

The patent delay causes a big dilemma for inventors with highly marketable ideas. A patent gives extensive rights to manufacture, use or sell an invention for a certain number of years. If an entrepreneur waits for a patent, they may run out of money or risk a bigger company stealing their thunder. But if they release their product without patent protection, they risk someone else stealing their ideas and competing with them in the market.

A patent not only provides inventors with protection, it also gives them more credibility with potential investors. The significant delay in getting a patent could be slowing economic recovery, as small businesses and inventors wait for patent approval before launching products.

Read more about how patents affect innovation and the economy at Patent delays slow company.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

When a company wants to introduce a new product, they need to be careful that they are not infringing on someone else's existing patent or trademark. The following are four examples of out of the ordinary patents and trademarks that may trip up a new product introduction.

Apple Computers vs. McIntosh

When Apple started developing the Macintosh, they deliberately spelled the name wrong in order to sidestep any trademark infringement issues with McIntosh, a high-end audio equipment manufacturer. McIntosh objected, and Apple ended up paying McIntosh an undisclosed licensing fee to be able to use the name in perpetuity.

Amazon one-click

Amazon patented its one-click web checkout system in 1999. Since then it has licensed use of the technology to other companies – but not to rival Barnes and Noble, which they sued for using a similar feature on their website. Long held up as an example of a patent that should never have been awarded, much of the patent was turned over in 2007, but Amazon still protects what is left of it.

Color trademarks

If you want to make pink insulation, you may get a cease and desist letter from Owens Corning. The same holds true if you want to start a wireless phone company; it would be best to stay away from the T-mobile signature magenta. Yes, it is possible to trademark a color as it relates to a specific product or service.

Verizon Droid

When Verizon wanted to name its new phone Droid, they had to ask permission from Lucasfilm, which patented the term in 1977 – the year Star Wars came out. Verizon currently uses the name under license.

You can read about several more surprising patents at They Own WHAT? Nine Tech Patent and Trademark Oddities.

If you have an original product that you would like to patent, or if you need to make sure you are not infringing on someone else's patent or trademark, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The latest efforts in patent law reform have yielded results in the form of tentative legislation in the Senate.

Until now, the most recent patent law revison was a bill in the House of Representatives in 2007, which ultimately stalled because opposing industry leaders could not agree on damages to be paid in the case of infringement suits. The current proposed legislation eliminates this conflict. Instead of determining an amount for fees or allowable damages in lawsuits, the committee plans to empower the Patent Office with that task. In this manner, the Patent Office will act as a "gatekeeper," with the power to adjust fees and lawsuit damage amounts depending on the importance of the subject matter. For example, if a drug company has developed a new treatment that is highly important, the patent judge may allow that company to collect more damages in an infringement suit.

Hopefully these new ideas will pass both the Senate and the House and become law. It seems reasonable that the Patent Office is in the best position to determine fees and damages. Also, judges allowing more damages for more important inventions will encourage innovation in those areas.

For more information regarding patents, contact a patent attorney to set up a consultation.

Most inventors are probably aware of patent application and maintenance fees. In order to keep a patent legally active, maintenance fees are required 3, 7, and 11 years after issuance of the patent and vary in amount depending on the entity filing classification. Although the maintenance payments seem steep, reviving an expired patent is even more costly. For example, in addition to paying the most recent maintenance fee, a petition and a revival surcharge is required to have the patent reinstated. The surcharge is either $ 700.00 for an unavoidable failure to pay the maintenance fee or $1,640.00 for an unintentional failure. Furthermore, if more than two years lapse after the patent's expiration, it can only be reinstated in the case of an unavoidable failure.

Additionally, before the Patent Office will accept the delinquent maintenance fees and surcharges amounts, a petition must adequately explain the reasons for the delay. The petition must allege specific facts as to why the delay in payment was either unintentional or unavoidable. For example, an unavoidable delay requires the petitioner to list the steps he or she took to ensure timely payment. Furthermore, it must demonstrate there was no additional delay after discovery of the expired payment. Though unavoidable failure to pay cost less to revive, the standard of proof is more difficult to meet and is thus rarely granted.

If you currently own a patent or are thinking of obtaining one, contact a skilled patent attorney to learn more about the various fee and requirements in order not to miss any important deadlines.

In a move to "incentivize innovation," the Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) rescinded former patent regulations that some said imposed undue restrictions on patent applicants. The old rules were enacted in August 2007 by the previous administration and were "highly unpopular from the outset."

The rules limited patent applicants in two ways. One set of regulations impeded the process of getting extra continuation applications. Continuation applications allow an inventor to disclose additional claims while maintaining the priority date of the original patent. Applicants were allowed two continuations as a matter of right. The USPTO granted additional requests for continued examination however only upon a showing of good cause.

Another regulation limited patent applications in substance. The so-called "Claims Rule" permitted only five independent claims per application. The rule further limited the total amount of claims per application to twenty-five. Anyone exceeding the guidelines was required to submit extra information to help patent examiners process the applications. These rules were put in place to expedite the patent process, however critics said they merely weakened it.

If you are considering patenting your invention, contact a competent patent attorney to arrange a consultation.

A new invention is often followed by imitating competitors unless, of course, that new invention is protected by a patent. That various blanket with sleeves products serve as a perfect example.

You're probably familiar with the infomercial-promoted Snuggie, the blanket with sleeves. With the Snuggie, a user can stay "totally warm" and still have the "the freedom to use [their] hands." The product seems fresh and has been referred to as a trailblazer. However, the Snuggie is not the first of its kind. It is predated by the Slanket, the original blanket with sleeves. In turn, the Slanket is predated by the Freedom Blanket, also called the original blanket with sleeves. Although the inventors of the Freedom Blanket have made online claims that their sleeved blanket idea was stolen, they have not sought legal action. Similarly, the Slanket inventor, Gary Clegg, has not sued because he never patented his product. He claimed that he attempted to patent the Slanket, but was told by patent lawyers it would not be feasible. Clegg considers the Snuggie's marketing campaign to be advantageous to Slanket sales because the Snuggie's popularity has raised consumer awareness about the product in general.

These products exemplify the importance of patent protection. Because the inventors of the Freedom Blanket and the Slanket did not seek patent protection, competitors were free to borrow their idea and create similar products. To determine whether or not you should seek a patent for your invention, get in touch with a patent attorney to explore your options.

The United States intellectual property offices (U.S. Patent and Trademark Office and U.S. Copyright Office) are open to comments about a new world wide treaty that could affect copyright laws. The World Intellectual Property Organization has recently considered an international treaty that would create minimum standards in copyright laws to provide people who are blind or face other visual impairments better access to copyrighted materials.

The draft treaty is sponsored by the World Blind Union and was introduced at the May 2009 session of the WIPO's Standing Committee on Copyright and Related Rights. At the committee meeting, the United States delegates indicated a commitment to enhancing accessibility of copyrighted works. They also stressed the National policy of gathering information about proposed ideas through consultations, information meetings, and notices of inquiry with citizens.

Anyone is invited to comment on the draft treaty. Comments are due on November 13, 2009 and may be submitted electronically.

In 2008, the United States Congress established a new Office of Management and Budget administrative post: U.S. Intellectual Property Enforcement Coordinator. On September 23, President Obama delegated that position to Victoria Espinel, former Assistant USTR for Intellectual Property and Innovation.

Ms. Epinel's primary job will be to combat counterfeiting and bootlegging of software, music, films, and drugs. She'll have her work cut out for her in trying to encourage countries like China to crack down on piracy abroad and prevent such illicit materials from entering the U.S.

I applaud the decision to create a dedicated executive IP position in order to fight the rampant problem of copyright violations. Not enough is being done to make certain that artists rightfully receive proper recognition and compensation for their works.

The standard for proving fraud in trademark applications, which is grounds for invalidation, has been intensely debated this year. In my post in March 2009, the Trademark Trial and Appeal Board (TTAB) suggested that "inaccurate declarations of use" could possibly amount to fraud. Months later, the TTAB issued a ruling that such inaccuracies only made a "presumption of fraud", which an applicant could overcome by correcting any falsities on the application before a challenge arose. Thus applicants were provided an "option to cure" any inaccurate statements on their trademark applications. The above standards were unfavorable to trademark applicants due to the high risk of trademark cancellation due to invalidation. Under such rule, applicants and their attorneys were required to go above and beyond due diligence in determining the course of use for their potential trademarks.

As if in step with the increasing level of protection for trademark applicants, a recent decision from the United States Court of Appeals for the Federal Circuit provided an even narrower standard to proving fraud and canceling applications. Now the challenger has the burden of proving the applicant had "actual intent to deceive the United States Patent and Trademark Office." In approving this higher standard, the Court reversed the previous TTAB decision and remarked that the TTAB "erroneously lowered the burden of proof" required to invalidate an otherwise legal trademark application.

Despite this added protection, accuracy and honesty is still extremely important in trademark applications. If you are considering obtaining a trademark, first consult with an experienced trademark attorney.

A recent post of mine discussed the financial woes of the United States Patent and Trademark Office (PTO), which are connected with the decrease in applications being filed. A solution may be on the horizon. However, it does not appear to be favorable to future inventors. A letter from the Secretary of Commerce, Gary Locke, urges the Obama Administration to grant the PTO the ability to temporarily raise fees.

The reasoning behind such a "limited interim fee adjustment" is that it is the option with the least adverse effect. Other alternatives include cutting the budget by eliminating PTO services or using Federal tax dollars to subsidize operations. The proposal considers increasing standard application fees, maintenance fees, and time extension fees by roughly fifteen percent.

In contemplation of a possible fee increase, now is the time to patent your invention. Contact a competent patent attorney to arrange a consultation and determine the best course of action.

A Florida boat manufacturer, Hell's Bay , obtained a settlement in its case (which included a trade dress claim) against Beavertail, a Minnesota based boat manufacturing company. Hell's Bay, located in Titusville, Florida, has many boat designs, including several shallow water skiffs. In Hell's Bay's case against Beavertail, Hell's Bay claimed that a number of Beavertail's skiff designs copied those of Hell's Bay designs for skiffs. Hell's Bay also claimed its shallow water skiffs were entitled to trade dress protection because of the uniqueness of the hull designs and the skiff's look.

Trade dress deals with the way providers of goods and services package or design their products. In evaluating whether "packaging" or design of products can receive trade dress protection, courts use the same criteria as they use in trademark claims, and trade dress may be entitled protection even though it is unregistered. Some of the criteria courts look at in determining whether to afford trademark or trade dress protection are whether there is a likelihood of confusion as to the source of the goods, whether the mark is functional, and whether the mark is inherently distinctive or has acquired a secondary meaning. If the packaging or design deserves trade dress protection courts can award injunctive relief along with monetary damages. In the Hell's Bay case, the exact settlement terms were not disclosed and no liability was found or admitted; however, as part of the settlement, Beavertail did discontinue manufacturing the questioned designs, destroy its molds for those hulls, and give Hell's Bay some monetary compensation.

If you are a business owner it is important to remember that product design and packaging, including the 'look and feel' of your business, may be entitled to trade dress protection as long as they meet the required standards. If you have questions about trade dress and trademarks, please let me know.

Oprah Winfrey and Dr. Mehmet Oz are suing over 50 small beauty product and dietary supplement companies across the country, claiming that the businesses falsely professed that the TV personality and her recurring talk show health expert endorsed their merchandise.

Among Oprah's list of grievances are consumer fraud and unauthorized use of names, likenesses, and trademarks. Many of the defendant companies appear to be fly-by-night outfits, running credit card scams. The victims are unsuspecting buyers of their vitamins, anti-cellulite and anti-wrinkle creams, and tooth-whitening products. Oprah is incensed that her reputation was purportedly tied to these questionable organizations.

The clout Oprah has today is mind-boggling, but not surprising! People will run out and buy anything if it gets a thumbs-up from her. The same goes for any powerful or famous person. To think that these companies would misrepresent the facts just to capitalize on her sphere of influence is a testament to Oprah's power in the market. While we could argue that a little more caution from viewers in making purchases couldn't hurt, trademark laws exist to protect consumers from being confused as to who endorses which products.

Ensure that your name isn't associated with sketchy characters! Contact a trademark attorney for protection!

The time it takes to get a patent approved by the United States Patent and Trademark Office is getting longer and longer. The average wait for a first response from the USPTO to a patent application is now more than 2 years. From start to issue, the current average time lag is nearly 3 years!

The USPTO has over 1.2 million patent applications pending and received about 497,000 new applications in 2008. As I discussed in a previous entry, there is something of a budgetary crisis going on at the USPTO right now and unfortunately the agency simply does not have enough resources to dedicate to the examination and review of patent applications at this point. Unfortunately, the current economic situation has forced many governmental agencies to tighten their belts, meaning processing gets delayed, and the public has to wait longer and longer. Inventors are no exception.

What does this mean for your invention? It has become difficult to predict the time frame in which a patent may be issued, and this uncertainty may adversely affect your ability to secure investors and bring in new capital to your firm based on near-future intellectual property rights. Furthermore, infringers may come out of the woodworks while your patent is being processed. The best course of action is to apply early and get the ball rolling ASAP! Issued patents give cease and desist letters a lot more teeth when asking an infringer to stop.

Contact a patent attorney to get started right away with the patent process!

In a surprising new trend, investment firms and new businesses are gobbling up a new kind of capital. They are seeking to buy, sell, and license patents via auctions. Under such a system, inventors make their patents available for sale and transfer all or part of their rights to the highest bidder.

The potential benefits of this emerging market that are being touted by analysts include increased innovation, reallocation of costs, and a reduction in patent litigation. In our capitalist society, we are told that market forces will naturally determine the value of a specific product and thereby encourage entry into that field. We can expect patent auctioning to grow rapidly but we are a long way off from seeing patents up on eBay.

While I believe in the alienability of patent rights and freedom of contract, I think both inventors and investors alike should be wary of jumping in headfirst without carrying out proper due diligence. We've seen unbridled trading of nontraditional assets before in the mortgage industry and it played a big role in the recent economic crisis here in the U.S.!

Contact a comprehensive patent attorney and consult with a business development expert to gauge the worth of your invention!

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder.

Van Johns had registered the website AAA.net which appeared similar to AAA's website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John's site featured advertisements for AAA's competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Shelden Kaplan, longtime engineer and innovator, passed away September 21, 2009 from complications resulting from liver cancer. At the fore of Mr. Kaplan's many accomplishments are the creations of the ComboPen, and EpiPen, respectively.

The ComboPen is used by the military to treat soldiers poisoned by nerve agents. The EpiPen is a later derivative that contains epinephrine and serves to save people with lethal allergies. Millions upon millions of people have acquired prescriptions for EpiPens, and innumerable deaths have undoubtedly been prevented by the device.

What's amazing about Mr. Kaplan is that he never received any profits, amassed any royalties, or garnered any fame from his invention. I think it's remarkable that someone would toil away on such a salubrious technology in complete anonymity!

An upcoming case, Ride the Ducks v. Bay Quackers, is set to highlight the importance of sound marks, an often overlooked, but key concept of trademark law. A Georgia tour company called Ride the Ducks is suing Bay Quackers, a San Francisco tour company, claiming that the latter distributes kazoos that produce a quacking sound that is identical to the one made by Ride the Ducks' Wacky Quacker noisemaker.

While this may seem somewhat ridiculous, a sound can establish a link in a listener's mind, creating a mental association with a particular business. To qualify for registration, a sound mark must be source identifying and must either be inherently distinctive or have acquired distinctiveness. Famous sound marks include NBC's chimes, the Pillsbury Doughboy's giggle, AOL's "You've got mail" alert, and MGM's lion's roar.

In addition, colors, 3D marks, graphics, scents, and other non-drawing formats also may be eligible for trademark registration. You work tirelessly to carefully sculpt your brand image and amass goodwill. It's critical to employ both common and unorthodox IP protection to uphold your company's reputation!

A trademark attorney can help you craft a personal IP game plan!

Franchisors and franchisees must protect the trademarks and service marks that identify their services or goods, but they also must be careful not to infringe upon other's trademarks or service marks. Litigation can be costly, and whether you win or lose, a lawsuit could potentially bankrupt your business.

One such example of a franchise having to litigate a case is Paris Hilton's lawsuit against Hallmark Cards. The dispute is over the use of a likeness of Paris Hilton's head and the slogan "THAT'S HOT." This phrase was the topic of a previous Celebrity Trademark spotlight I did, featuring the scrawny blonde drama queen's trademark application, which is still pending with the USPTO. Hallmark Cards used the likeness and slogan on a card sold in its franchise stores. Paris Hilton has trademarked the slogan she made popular in the television show, "The Simple Life". The case is has not been finally decided; however, Hallmark Cards recently lost its appeal for dismissal. The 9th Circuit Court of Appeals has remanded the case to the trial court so the disputed issues can be decided.

The whole purpose of trademarks and service marks is to give businesses something to uniquely identify their services or goods. Obviously, you want to use your franchise's trademarks and service marks as often as possible for branding purposes; however, when preparing advertising or marketing material for your franchise, it might be a good idea to consult with an attorney to make sure any likenesses or images used are not already protected.

David Kappos, nominated to become the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, addressed the Senate Judiciary Committee on July 29 as part of his confirmation hearing. As I had mentioned in an earlier post, Mr. Kappos previously served as IBM's vice-president and assistant general counsel for intellectual property.

Among other things, Mr. Kappos vowed to root out counterfeiting and piracy, highlighted his plethora of qualifications, and tackled questions about potential conflicts of interest with regard to future IBM patents. He intends to pursue an international anti-piracy strategy, working in conjunction with many foreign governments, particularly those in Asia. Many senators reacted favorably to Mr. Kappos and his confirmation appears to be imminent. The panel is expected to vote on Kappos in early August.

Mr. Kappos' resume certainly is impeccable, and he seems to be saying all the right things about his upcoming position. His plate will definitely be full as budget concerns at the USPTO loom over all policy decisions. I only hope that his ambitions aren't just pipe dreams and that concrete actions will be taken to make good on his promises!

Competitors to Google are working feverishly to invalidate or delay a settlement agreement between Google and numerous authors and publishers that would avoid copyright infringement litigation over the digitization of literary works for the Google Books platform.

Google Books is a digital book system which scans in books, converts them into text, and makes them available and searchable online. Authors and publishers sued Google for unauthorized use of copyrighted materials. In October 2008, Google and the complainants came to an agreement that would allow Google Books to continue development.

The settlement has not been approved yet and raises antitrust issues into which the United States Department of Justice is launching an investigation. Companies like Microsoft, Amazon, and Yahoo are banding together to fight the deal as they claim that it unfairly insulates Google from liability for violating copyrights.

I think that if Google freely contracts with the authors and publishers, then it should be honored. The other tech businesses should draft their own agreements to secure the same rights instead of whining about Google! What do you think? Please post your comments!

The United States Patent and Trademark Office is shifting toward full electronic patent application processing with a program called e-Office Action. After successfully testing it with a pilot project, the USPTO is moving forward with plans to implement the e-Office Action program.

Once the new program is in place, applicants will receive notices from the USPTO in e-mail form, alerting them to view new correspondence through the Private PAIR retrieval system on the USPTO website. This system obviates the need for paper mailings and is intended to streamline patent prosecution by getting information to applicants much faster.

Any registered patent attorney or agent is eligible to participate in the e-Office Action program and may submit provisional and non-provisional applications including utility, plant, design, reissue applications, and national stage applications.

I have been filing my clients' trademark applications with the USPTO for some time now, using an electronic system, similar to this procedure. Work is submitted instantaneously--truly an attorney's dream!

Twitter can't seem to catch a break when it comes to trademarks. The United States Patent and Trademark Office has preliminarily denied Twitter's bid to trademark the word "tweet." Twitter appears to have lost the race, not against time to prevent their potential trademark from becoming generic, but against three other companies that filed applications containing the word "tweet."

TweetMarks, Cotweet, and TweetPhoto all submitted trademark applications for their respective names that predate Twitter's filing. What's ironic is that these are all independent sites that were created to piggyback onto Twitter! The USPTO wrote that a trademark on "tweet" would likely cause confusion among consumers as to its source. The goal of a trademark is for the public to be able to unequivocally identify a brand.

Twitter has indicated that it even if the trademark is ultimately registered, it would allow liberal use of "tweet" unless it would be injurious to the company. Now it seems that Twitter will be unable to protect the term at all. No matter what the outcome, millions will still be tweeting, including me!

I can think of other grounds upon which "tweet" would be denied registration. Trademarks should describe a product or service. They cannot be generic nouns, like "milk," "car," or "scissor." I have heard the word used as a noun ("Post a tweet so I'll know what you are doing"). Similarly, trademarks cannot be used as verbs ("Her thumbs are sore from tweeting on her phone"). Thus, trademark registration should only be granted if "tweet" was used as an adjective, as in, "Your tweet micro-blog is always updated," or "Stop sending tweet messages at the dinner table."

I can help you navigate the subtle trademark registration rules. Let me know if you have a question about them.

Even the United States Patent and Trademark Office isn't immune to posthumous Michael Jackson mania. The USPTO has opened a new exhibit in conjunction with the National Inventors Hall of Fame and Museum to commemorate the late Gloved One's contributions to intellectual property.

Catch it while you can! The exhibit is slated to run from July 15 to September 7, has no entry fee, and all are welcome to visit. As I mentioned in an earlier post, Michael Jackson was very savvy when it came to IP and even had his own patent for gravity-defying shoes.

Whether you loved him or hated him, there is no denying the indelible imprint Michael Jackson left. This is exemplified by the many trademarks he left behind, including this one, for his Heal the World Foundation. With all the bizarre news reports swirling about both his life and death, it's nice to focus on some of the positive things he did!

Want to see the exhibit in person? It's located inside the USPTO headquarters at 600 Dulany Street, Alexandria, VA, 22314.

The Volt can run on electricity alone, but requires lots of charging so who knows if such mileage results are remotely attainable for the average driver. The Volt's range on electric-only propulsion is 40 miles when it is completely charged. Theoretically, you could get infinite mileage for as long as the battery pack has enough power.

I think that potential licensees and car buyers should be wary of such lofty projections and also consider the fact that the development time of the Volt was considerably shortened, while the Prius is tried and true and has been around for nearly a decade!

I am skeptical that the quality and reliability of the Volt will be adequate as its creation appears to be a knee-jerk reaction to the giant spike in gas prices. Unless the Volt ends up being bulletproof and achieves insane fuel economy, Toyota will likely be the victor in this fight.

Do you think the Volt will pan out? Please post your comments or contact me to discuss!

Two auto industry titans are duking it out to sell their respective hybrid powertrain technology to other manufacturers and suppliers. Toyota and General Motors, the #1 and #2 carmakers in the world, are approaching competitors to license their slew of patents and other intellectual property to them.

Toyota has long been the preeminent leader in hybrid vehicles, introduced the first-generation of the ubiquitous Prius model with Hybrid Synergy Drive in 2001 and has sold millions upon millions of them. True to form, GM was late to the game and is rushing its plug-in hybrid model to market, the 2010 Chevrolet Volt powered by the Voltec propulsion system.

GM is touting the virtues of the Volt which has garnered preliminary mileage estimates of 230 mpg! At this stage, the 230 mpg claim seems ludicrous, but the Environmental Protection Agency appears to be backing it up.

Do you think 230 mpg is possible? Please post your comments! Up next, I'll discuss why I think we should reserve judgment as to the efficacy of the Volt.

Have you noticed that some brand names include the name of a location to denote where the products originate, while others include a location that is completely unrelated?

You can use a geographical or regional name in your trademark as long as its meets two requirements: the mark cannot be geographically misdescriptive or deceptive. First the term cannot be geographically misdescriptive. This means the mark identifies a location other than the origin of the goods or services. For example, Durango chewing tobacco is completely unrelated to the city of Durango. The product is neither produced or distributed from there.

Second, the mark cannot be deceptive. A mark is deceptive when consumers reasonably believe the goods or services originate from the described area due to that area's reputation. Back to the Durango example, that brand is both misdescriptive and deceptive because the city of Durango does in fact produce similar tobacco products. Therefore, consumers would reasonably infer that the Durango brand also originates from the named city.

On the other hand, misdescriptive terms are permitted if they are not deceptive, meaning consumers will not likely believe goods or services come from that area. For example, the Yukon is a trademark for an SUV. Although the Yukon is also the name of a location, it is not known for manufacturing SUVS. Therefore, consumers are not deceived into making the false connection between the product and the location.

The estate of late pop star Michael Jackson filed suit recently against two California-based organizations that it claims have infringed on its "King of Pop" and "Thriller" trademarks while pretending to be a charitable organization endorsed by Jackson.

This is the first trademark infringement suit filed by the estate since Jackson's death in June of 2009. The Heal the World Foundation and an affiliated corporation called United Fleet were named in the suit, which states that the defendants have registered 6 trademarks and applied for 41 more that could be considered "identical or confusingly similar" to the Michael Jackson estate's trademarks. The suit seeks to both to prevent the defendants from using the trademarks and also asks for the destruction of any infringing products.

Trademarks were developed as a means of protecting the public by making it easy for them to identify the source of a given good. Trademark holders need to be vigilant to prevent their marks from being infringed upon by parties with no rights to the mark. This not only protects their financial interests but helps them maintain their good name with the public.

If you have an unresolved business legal matter, please contact a trademark attorney our firm for expert legal counsel.

Find out more about this story at Michael Jackson Estate Alleges Violations of Trademarks, Rights of Publicity.

True story: I loved Twitter. Then I hated Twitter. And now I use it only to diversify my online social media portfolio. I mean, the micro-blogging site has even spawned new lingo in the English language! As I just used the term, an update posted on Twitter is referred to as a "tweet."

Consequently, Twitter has submitted a trademark application to the U.S. Patent and Trademark Office for the word "tweet." This process likely will turn into a race against the clock as "tweet" may become genericized before Twitter can fully establish its rights in the term.

A genericized trademark refers to one that has become so prevalent that it comprises the definition for a general class of product or service. Such a trademark no longer carries the specific connotation intended by the applicant but has developed into the generic description itself. Notable examples of genericized trademarks include "cellophane." Companies like Xerox take painstaking efforts to educate the public not to use the word as a verb ("Xerox this memo,") but rather, as an adjective ("Make a Xerox photocopy.")

What this means is that Twitter must actively take measures to inhibit broad usage of "tweet" or else it may effectively forfeit some of its rights in the word. One option is to formally notify users of proper trademark use. I would love to be part of the ad campaign that promotes phrases like, "Send me a tweet micro-blog." It is critical for trademark applicants to maintain the fine balance of popularizing their brands while concurrently preventing genericide so that they may retain their full intellectual property rights in their trademarks.

Are these rules nitpicky? Sure they are! But they all serve a purpose. Want to find out more? Send me a tweet!

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID's technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID's inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

Several gene research groups have taken legal action against Myriad Genetics & Laboratories, the University of Utah, and the United States Patent and Trademark Office in an ostensible attempt to end human gene patenting in the United States. The suit centers around two human genes with ties to breast and ovarian cancer for which the University was granted seven patents and licensed them to Myriad.

The objective of the plaintiffs appears to be to reverse over 20 years of precedent providing for the allowance of patents on human genes. Thousands of patents have been issued on human genes and a victory for the gene research groups would result in a seismic shift in the legal landscape.

I think that we should carefully scrutinize what we consider to be patentable human gene processes. However, I strongly believe that innovation should be rewarded, and that access to technology should have minimal limits. Researchers should be fairly compensated for their efforts and the public should also enjoy the benefits of progress.

Eliminating the potential for patents altogether would remove a considerable incentive for entities to invest R&D money into exploratory projects, and ironically may prevent breakthroughs from occurring in the first place. On the other hand, it is important to ensure that people aren't excluded from the use of new gene technology to the point that public health suffers. For that reason, it is critical that both advancement and access are maximized!

Do you think human genes should be patentable? Please post your comments or contact me to discuss!

The word patent may naturally evoke ideas of innovative inventions and gadgets. But you should also be aware that patentable subject matter encompasses more than just tangible inventions or machines. It is also possible to patent a process or method.

You can obtain a utility patent for any new and useful process, machine, article of manufacture, or composition of matter. A process is defined as a series of steps or acts to be performed. To determine if a process is patentable, the examiners at the USPTO apply a number of tests, such as whether the process includes laws of nature, natural phenomena, or abstract ideas, which are all non-patentable, or whether the process transforms an article into a different state or thing, which is consistent with patentable subject matter. Previously, the main test was whether a process produces useful, concrete, or tangible results. This standard has been overruled by court rulings.

A process is not sufficiently transformative if it merely involves gathering data into an algorithm, such as conducting clinical tests and determining if any abnormalities exist. On the other hand, a process is patentable if it transforms the raw data into a particular visual depiction for display. In such case, the data is representative of a physical object or article.

For more information about obtaining a patent for your novel and useful process, contact a competent patent attorney.

We all know Apple, the trendy electronics and software brainchild responsible for mesmerizing us with iPhones and iPods. The technology giant hypnotizes us, and we truly believe that without their fresh, avant-garde products, we are not sexy or cool. (*Ahem* Despite their marketing prowess, I still believe I can be sexy and cool as a PC girl.)

What most don't know is how unequivocally silent Apple has been when it comes to disclosing information about its research and development. Despite online advances such as Facebook, Twitter, and other sources for disclosure, the company remains tightlipped with respect to its engineering.

Strict controls are imposed in the name of security to prevent employees from releasing any valuable information and harsh sanctions are in place for those who do. Apple is virtually impervious to leaks and even goes so far as to keep its own employees in the dark; many themselves are shocked when new products, such as the latest iPhone 3GS, are unveiled. The company is also famous for its product plan ruses designed to mislead both outsiders and also its own employees as to the state of certain Apple technology.

Even seemly innocuous information, such as the health of CEO Steve Jobs following a secret liver transplant, is kept under lock and key. Such unwavering devotion to discretion is a calculated business model and is indicative of executives that fully appreciate the high value of intellectual property. However, this secrecy can breed suspicion and give birth to consipiracy theories among consumers. Trade secrets are critical for any business and comprise the essence of brand image and identification, but today's sophisticated public demand the truth and trust in the products they support.

What measures should your business take to protect its trade secrets? An intellectual property attorney can show you how to preserve your sensitive information, and balance a positive brand name image.

Many known brands incorporate punctuation, such an asterisk (E*Trade) or an exclamation point (Yahoo!), into their trademarks. But does this translate into a stronger mark? More importantly, will punctuation make your trademark stronger?

In general, punctuation will not increase your trademark's strength unless it alters the actual meaning of the words or creates more consumer identification with the mark. In other words, punctuation tends to strengthen trademarks when it causes consumers to associate the mark with a particular good or service. For example, E*Trade and Yahoo! are known partially for their punctuation.

If a mark consists of terms that are generic or merely descriptive of goods or services however, adding punctuation will not increase its strength or make it more capable of being registered as a trademark. This is because changing the appearance of the mark does not change its meaning in the eyes of consumers. For example, the Trademark Trial and Appeal Board held that the mark "3-O's", used in connection with car wheel rims, to be merely descriptive and denied trademark registration. The TTAB noted the term thirty is commonly used to describe the diameter of wheel rims. Despite the unique configuration of the hyphenated 3 and O, there is no difference between the mark and the descriptive term because consumers understand the two as synonyms.

Are you considering registering a trademark? Be sure to consult with an intellectual property attorney to assess the strength of your mark and possible methods for improvement.

When applying for trademark registration with a use-based application, it is necessary to provide information regarding use of the mark in commerce. While the lay definition of 'commerce' is simply business transactions, the legal definition provides specific requirements.

In Federal Trademark terms, commerce refers to that which is regulated by the U.S. Congress. This includes interstate commerce, which is any transaction between states. For example, using the mark in the ordinary course of trade across state lines or out of the country is satisfactory. Other forms of interstate commerce include advertising over the internet because it involves the transfer of information through communication networks that cross state lines and is available to a national audience. In addition, advertising through television qualifies as use in commerce even if produced and broadcasted within one state. This is because television is federally regulated.

Proof of use in commerce is accomplished with a sworn statement declaring how the trademark is used as well as the date of its first use. For more information regarding use in commerce or trademark applications in general, contact a qualified trademark attorney.

 Congress has received a request from the United States Patent and Trademark Office for rule changes to offset ongoing heavy financial losses the agency has sustained. Revenue from patent filing and maintenance fees has been shrinking rapidly and the USPTO has been forced to make budget cuts across the board.

A steady influx of patent portfolios from companies, a substantial backlog, and internal red tape all have contributed to diminishing returns. Annually, the USPTO receives approximately 450,000 applications which must be analyzed and then either granted or rejected by one of 6,285 patent examiners.

The USPTO has approached various congressional committees for appropriations and suggestions on how to address its shortfalls. Ominously, USPTO surveys have revealed that patent attorneys and companies believe that the USPTO's economic condition may deteriorate further.

The agency looks to improve efficiency and bolster operations as President Barack Obama recently nominated David Kappos to be the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Kappos currently serves as IBM vice-president and assistant general counsel for intellectual property.

Kappos has been a patent-reform advocate, lobbying for higher-quality patents and a reduction in excessive patent litigation. Hopefully this new director will implement new, cost-effective strategies and steer clear of such knee-jerk reactions as increasing patent fees.

Will the USPTO's monetary woes affect the progress of your patent? File early with the help a thorough patent attorney to avoid potential delays and higher expenses!

The recently deceased superstar was known by many names: the King of Pop, M.J., Jack-o, and the list goes on. We also recognize him either as a dark-skinned cherub-faced child or a pale, middle-aged man with over-processed facial features. Why don't we also know him as an Intellectual Property Goldmine? Love him or hate him, the supremely talented character was a genius when it came to securing various forms of intellectual property during his long and decorated career as an artist and performer. Michael Jackson brilliantly relied on copyrights, trademarks, and even patents to protect his work, and was an avid collector of others' proprietary works.

Jackson registered his name with the U.S. Patent and Trademark Office and held a multitude of trademarks ranging from performances to merchandise to fan clubs. Even for a personality as distinctive as Jackson, trademarks played an important role in further distinguishing him from others.

Not only did Jackson guard his own work and attributes, he even acquired copyrights to other music. He owned a 50 percent stake of Sony/ATV, a joint venture which controls publishing rights to two hundred and fifty one Beatles songs. Jackson famously outbid Paul McCartney to purchase the song-copyright catalog in 1985. Today, Sony/ATV is estimated to be worth upwards of $1 billion dollars.

Amazingly, Michael Jackson even patented his very own invention, a method and means for creating an anti-gravity illusion. The patent features a shoe interfitting with a peg protruding from a stage and enables a wearer to lean forward at a 45 degree angle to the floor without falling. It certainly appears to be unprecedented for a musician to have obtained a patent himself.

Are you a college or graduate student with a good idea for a new invention? Check out the Collegiate Inventors Competition. The competition has recognized, rewarded, and encouraged hundreds of inventors worldwide since 1990. To be eligible, you must either be a graduate or a college student, or have been enrolled as such in the past 12 months.

An entry shall include a model of your invention that is complete and workable. The invention must be the original work of the applicant and cannot have been made available for public use or patented more than one year prior to submission. Entering the competition does not constitute a public disclosure. Two winners will receive cash prizes of $15,000.00. Additionally, 12 finalists will each win a $2,000.00 cash prize and an all expenses paid trip to present their work to a panel of judges.

Even if you miss this year's competition, you still need to protect your invention! Do a patent search to see what other inventions are similar to yours. It might be in your best interest to file a patent application, to prevent others from using your methods to build your invention. Schedule a consultation with a patent attorney to discuss your legal rights.

If you have a successful business, you may want to consider expanding through franchising. By franchising, you can grow larger and faster because the franchisees provide the funds for the growth, not you.

One important issue to consider before franchising is whether you have developed a strong trademark for your business. This is crucial because a strong trademark delivers a consistent message to consumers about your franchise's products and services. Franchisees will pay higher royalties for a franchise like Subway, which has a nationally reputed trademark, than they will for a franchise with little or no consumer recognition.

In the very least, be sure to register your trademark before franchising. Registration provides a presumption that your trademark is valid. This will facilitate any claim of infringement in the unfortunate event that one of your franchisees attempts to improperly license or use your trademark.

A strong trademark is a term or phrase that does not merely describe the goods or services. Rather, strong trademarks require imagination, thought, or perceptions to link the mark with the provider of the goods or services. Such marks may suggest the quality of the goods or services, or may not have anything at all to do with the goods or services. For example, Greyhound might imply that a bus line provides fast transportation. Apple, on the other hand, may have nothing to do with a line of computers.

In an earlier post, it was stated that an inaccurate declaration of use on a trademark application would amount to fraud unless corrected before registration. According to a recent Trademark Trial and Appeals Board case, however, such inaccurate statements of use can be cured even after trademark registration.

If the registrant corrects the false statement prior to any challenge to the registration, it creates a presumption against fraud. This means that if the challenging party produces no other evidence to support registration fraud, the registrant will be found not-guilty of fraud. This decision provides a positive direction for future trademark registrants, even though it is not binding and therefore not mandatory authority. The option to cure a statement that has the potential to incur liability of fraud is a benefit to the trademark owner. Many future owners are initially unsure about the exact intended use of their mark. As a result, a common practice is to overstate such declarations of use because an understatement will likely lead to insufficient trademark protection.

Don't take a chance with your trademark application! Have a competent trademark attorney prepare or review your application.

It's one thing to have a patentable invention, but it's quite another to have a valuable invention. Before seeking a patent, or if you already own a patent, before selling or licensing the rights, it is important to ascertain its monetary value. That way, you will be able to make better decisions regarding whether or not to invest in a patent. Additionally, knowing how much your invention is worth enables you to negotiate more effectively with potential buyers. Practitioners use the following factors to assess the value of a patent.

Is there a market? First determine if anyone would be willing to purchase your invention. To do this, identify whether or not consumers actually need the product. You might accomplish this through personal experience, if the idea for your invention was born out of necessity, for example. This is usually only effective if the situation giving rise to such necessity is common to other people. If a market exists, determine its size. For example, try to figure out if the invention would serve a specialized niche of consumers or a broad base.

Are there comparable products? Another factor is to identify any comparable products already on the market. What are the other products' price points, and does your invention offer something new? For example, your invention may solve a problem in a specific area in which other similar products already exist. Highly valued products are those offering significantly more benefits than the competition.

Has this ever happened to you? You come up with a great idea for an invention. But before giving any thought to getting a patent, you contact a company and offer to sell your lucrative and profitable idea. Have you forfeited your rights to patent the invention? How do you disclose a proposal without forfeiting ownership?

You may still be able to patent your invention. The patent application will require proof that you came up with the idea first. One way to establish you are the inventor is to provide evidence of correspondence between you and the company discussing the idea.

However, a more effective method to avoid forfeiting a claim to an invention is to plan ahead by filing a provisional application for patent. A provisional application grants an earlier filing date as well as "Patent Pending" status to be used when disclosing your idea. Protection lasts up to 12 months from the filing date and is a relatively inexpensive investment. Thus, you are able to disclose your invention to potential buyers without fear of it being stolen and without the higher application costs associated with non-provisional patent applications. Before the 12-month period lapses, you can either allow the pendency status to expire or convert the provisional application to a non-provisional application, which will provide the benefit, if the application is granted, of being able to sue for patent infringement.

Perhaps the most important question in the patent process is "Do I really need a patent?" In the excitement of innovation, it is easy to prematurely opt for a patent. On the other hand, you may have a marketable invention and not even realize it. To answer the question above, consult the factors below.

Does your idea have value? Before applying for a patent, it may be wise to determine if the proposed invention or system will be of any value to consumers. A patent prohibits others from copying your invention but does not guarantee that you will make any money from it.

Do you thoroughly understand the market implications of the invention? Patent applications are sometimes created so narrowly that they fail to protect future market applications. Before seeking a patent, consider all the possible uses for your product or system as well as the possible ways to market it. This will assist your attorney in drafting a patent that protects your interests both in the present and in the future.

How much are you willing to invest? In exploiting an invention, the patent application fees are but a single step in process. Consider the available resources needed for the entire project. In addition to obtaining a patent, you may also need to develop and execute a marketing plan and a manufacturing plan if the invention involves physical products.

If you have considered obtaining a patent, contact an experienced intellectual property attorney for advice regarding how to proceed or whether another form of protection is more applicable.

You may be familiar with Octomom, the Florida woman who recently gave birth to octuplets, but have you heard of Octomom the brand? Nadya Suleman, "affectionately" nicknamed "Octomom" by the tabloid media, recently applied to the USPTO to register the nickname as a trademark for use with clothing and disposable diapers. The application presents some interesting issues.

Commentators say the term "Octomom" is probably capable of functioning as a trademark as long as it is used to identify a brand or a source of goods or services. Others contend that trademark examiners will think otherwise. The application includes a section stating the "mark identifies Nadya Suleman, whose consent(s) to register is made of record." Such a statement may cause her mark to be perceived as identifying a person, rather than products or services.

In the same light, even if Suleman was to trademark her own name, surnames usually receive the same treatment as descriptive marks under trademark law. Therefore terms that include a name, "Jones Cosmetics" for example, are not protectable without a secondary meaning. Suleman has not established a secondary meaning for her name or nickname, because she has yet to use the term in commerce to identify clothing or disposable diapers. It is likely that the USPTO may require her to offer proof that the name has a reputation connected with the listed goods and not merely to her.

If you have considered obtaining a trademark for a brand that contains a name, contact an experienced trademark attorney for advice regarding secondary meaning requirements.

If you have registered a trademark for your business, you may have also thought about using your logo with promotional merchandise. Many trademark holders increase brand awareness by affixing their mark to hats, t-shirts, or mugs. There are different methods of ensuring that the logo retains its protected status while you use it in this manner.

The best way to protect the mark is through registering multiple classes on the trademark application. For example, in addition to stating the mark will be used in connection with your particular goods or services, also indicate the mark will be used with classes that include promotional items such as t-Shirts, Class 25, and coffee mugs, Class 21.

In the alternative, if money is a concern, you may enforce your mark without registering for additional classes. Common law trademark rights can prevent others from using your mark in a particular region, with specified goods or services, if you are already using the mark. Because federal registration can cost anywhere from $275 to $ 325 per class, common law enforcement may be a more economical choice for business promoters with limited start-up capital. However, while common law rights protects the mark, they do not provide the same presumption of validity and ownership as federal protection.

If you have any questions about obtaining a trademark, or about common law trademark rights, contact an experienced trademark attorney.

As the economy undulates up and down, many people seek ways to cut costs. Inventors are no exception. If you are thinking about registering a patent, consider the following tips to help reduce the application fees, which I also share with my patent clients.

Be up-front. Provide your patent attorney with a complete and detailed description of the invention early in the application process. This reduces the need for later revisions, which increases costs. Attorneys often charge based on the amount of work performed. Therefore the total application price may increase if there are numerous updates and revisions. For instance, I usually charge a flat rate for preparing the application, but any work that needs to be done after that is completed on an hourly billing rate.

Be knowledgeable. Patent attorneys are experts at intellectual property law, but they may not be as well versed in the subject matter of your invention. It is therefore crucial that you provide them with enough of this information to complete the patent application. Giving your attorney sufficient information about the particular field of science or engineering relevant to your invention eliminates the need to engage in extensive research, which may also drive up costs.

Be complete. Before applying for a patent registration, have a complete idea, with sketches or drawings of your invention. Adding new features and alternate embodiments after the attorney has already drafted the application can further impact costs. While you do not need a prototype to file an application, I usually advise that my clients build a prototype. Seeing the invention in action and testing it often reveals features that need tweaking and improvement. It can be costly to add these updated features once I have filed the patent application.

What do these tips have in common? Communication. As with many attorney-client relationships, it is important to be open with your attorney. In any event, your patent attorney will likely let you know if you have provided sufficient information or if more information is needed.

While many people avoid hiring an attorney by filling out one-size-fits-all legal forms, if you plan to file your own trademark application, you may want to reconsider. Assistance from a trademark attorney is a wise investment.

Each and every field on the trademark application form has legal significance. That is, every entry defines legal rights, and an inappropriate entry may grant or deny an unintended legal benefit. Often, trademark owners commit several common errors while filing their own application, such as not selecting the proper filing basis or submitting an improper specimen. Another mistake is filling out the application by seeing how colleagues have completed theirs, or filling it out "the way I always do." Cookie-cutter answers are not always appropriate for a new trademark application.

Further, trademark owners may declare that they have used a trademark in commerce when, in fact, they have not. In trademark law, commerce refers to use across state lines. Because the Trademark Examiners do not always verify whether this requirement is met, your registered trademark may, in fact, be invalid and unenforceable.

Have a trademark attorney help you file your application. A good attorney should sit down with you to discuss your trademark, and the best way to maximize your legal rights by properly filing your application.

Congress is in the process of enacting new patent legislation that would introduce a first-to-file system, a significant change to current United States patent law.

If the amendment passes, the effective date of an invention will be the date the application is filed instead of the date of actual invention. Currently, the United States is one of the few counties to follow the first-to-invent system. Under this system, inventors apply for patents after first conceiving an idea then diligently reducing it to practice, which can be achieved by building a prototype. The effective date is determined by the date the inventor conceived the idea.

The first-to-file system is not without its critics. The main critique is that the system is unfair to the small independent inventor because it lends an advantage to well-funded corporations, which have sufficient capital to win the race to the Patent Office. This argument is based on the notion that independent inventors often create their inventions before investing in a patent application. On the other hand, large companies are able to file multiple applications first, and then proceed with the most workable ideas.

Many of my clients are independent inventors, who tinker with inventions as a hobby. For this reason, I affectionately refer to them as "garage inventors." I oppose a first-to-file system for patent applications procedures, because I do believe that it would unfairly prejudice garage inventors. This certainly would discourage them from continuing to contribute their innovations and ideas to this country's economy.

In order to register your trademark with the USPTO, you will need to submit a specimen. You may have heard this term or read about it, but what exactly does it mean? Also, what is the proper way to submit a specimen for a trademark application?

First of all, a specimen is "an actual example" of your mark being used in commerce or with the identified goods or services. This is more than a drawing of your mark.

For trademarks used with goods, a specimen is an example of the mark with the actual product or packaging. This includes tags or labels, containers, displays, or simply a photograph of the product bearing the mark. Invoices, brochures, and other documents are generally not acceptable forms of specimens for goods. However, such materials may be sufficient for service mark specimens.

For service marks, a specimen should show the mark used in conjunction with sale or advertising of the service. Examples include, signs, brochures, business cards, or stationary. The only requirement is that the document containing the mark also references the nature of the service. For example a business card bearing your mark along with the phrase automobile detailing service is sufficient.

In any event, your specimen should not include the actual product (or service for that matter) and must be either flat and no larger than 8 ½ by 11 inches if filing by paper application or contained in a digital JPEG image if filing electronically.

For questions regarding protecting your works of authorship, contact an intellectual property lawyer today.

There is a new way to stay informed of the news and notices from the United States Patent and Trademark Office by using an RSS feed. Now, instead of constantly checking the Official Gazette and Federal Register Announcements, you can receive real time updates on your email homepage.

RSS, or Rich Site Summary, is an information format that allows you to receive updates as they are published. You can use a favorite web mail homepage or an RSS feed reader to receive multiple lists of information by "subscribing" to each source. For example, with your Yahoo or Google homepage, you can get the latest headlines from the New York Times as well as recent blog entries from your favorite blog.

You can also subscribe to the Trademark Lawyer Blog by clicking the Subscribe icon on this page.

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods or services. On the other hand, you can register your mark through The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods or services.

Why register in both? In the event of infringement, you can seek remedies under both the federal and state laws. I recommend filing both federal and state applications if your competition in your industry is fierce and lucrative. An example of this would be the technology industry, especially prior to the ".com" bubble bursting.

You must, however, qualify to file for a trademark registration. Be sure that your trademark qualifies for registration before paying the filing fees, since those are non-refundable.

Congratulations to Doctor Easy Medical Products! They recently registered trademarks for a name and logo with the Florida Department of State, Division of Corporations. They registered the same trademark and logo with the United States Patent and Trademark Office in November 2008.

The Elephant Ear Washer and logo depicting a blue elephant spouting water from its trunk identifies a product that Doctor Easy produces. The product is an ear-washing device, which incorporates a pump spray bottle and a plastic "elephant trunk" tube that is long and flexible.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee. For a federal registration, filing fees are $275 per class of goods/services. For a Florida registration, filing fees are $87.50. Filing fee costs differ from state to state.

For more information on state and federal trademarks, contact a trademark attorney.

If you are a trademark applicant or registrant with the United States Patent and Trademark Office, be weary if a company contacts you offering services such as trademark monitoring or document filing. Such companies may appear to be affiliated with the USPTO and often request fees for their services. They usually send official looking communications that include personalized information like your trademark file number or the name of your mark. Such items are public information. Do not be confused as these companies are not government entities. They merely attempt to profit from public naivety. In a recent news article, the USPTO has warned that it does not provide such trademark services and is not affiliated with any such companies that do.

Further, if you have employed an attorney to file your trademark application, then you should not receive any correspondence from the USPTO. Your attorney acts as your agent in dealing with trademark matters. Therefore, all USPTO communications should go to your counsel.

If a company or organization that appears to be affiliated with the USPTO has contacted you or requested fees, you may file a complaint with the Federal Trade Commission.

If you have any questions regarding the trademark filing process, or are unsure if you have received a communication from the USPTO, contact an experienced trademark attorney.

Small businesses rely on their proprietary assets, and many of these business depend on global transactions. However, less than one fifth of these businesses realize that their federal trademark and patent protections are limited to the United States. Are your IP assets protected abroad?

Without a doubt, profits fall prey to overseas counterfeiting and piracy. Counterfeiting is the creation of imitation products while piracy involves the unauthorized use or reproduction of software.

Stopfakes.gov is a great resource to help determine whether you should seek international protection. The website features different tool-kits to educate business owners about intellectual property (IP) protection in various foreign countries. Also included are instructions for filing a compliant against international infringers.

Strategy Targeting Organized Piracy (STOP) is part of a government effort with a two part objective. The first part is to strengthen IP enforcement throughout the world. The second part is to prevent IP crime throughout the world. STOP, along with other government organizations, provide protection to domestic businesses by regulating U.S. boarders and preventing the importation of counterfeited products, for example.

For more information on international trademarks or patents, contact a trademark attorney who understand the need to work closely with IP counsel abroad.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to chose the base, column, and capital combination.

In addition to receiving trademark registration for their logo earlier this year, the company has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office for their name: Worthington. The mark consists of standard characters without a claim to any particular font, size, style, size, or color. This means that parties intending to use the name in any context--for example, over the radio, in different colors, or different fonts--will have to receive permission from Worthington Millwork.

Trademark registration includes many benefits such as the right to file a Complaint in federal court. By registering their name, Worthington has ensured that others will not be able to use it in the same class of goods or services. Improper use would lead to customer confusion and Worthington would have the power to take legal action. Thus trademark registration protects the company. Registration also protects the consumer by discouraging impostors from marketing inferior goods or services under the same name.

Are you interested in registering your company name or logo? Contact a trademark attorney for advice and help with the process.

"You got the right one baby!"

"The breakfast of champions"

"Reach out and touch someone"

These are slogans that identify Pepsico, Wheaties, and AT&T. Slogans and jingles can add enormous value to your business or brand by generating consumer good will and awareness. Not only will customers associate the slogan with your product or service, but the slogan may also evoke positive feelings. How many times have you had Mazda's "Zoom zoom zoom" song stuck in your head all day? A trademark identifies the source of origin of goods or services. However, trademark registration is not limited to names and logos. You can also register a slogan. In order to register a slogan as a trademark, the slogan must have acquired a distinctive character as a consequence of use and the slogan must associate, in the eyes of the public, between the goods or services and their origin. For more information about obtaining trademark registration for a slogan, contact a competent trademark attorney.

Clients from coast to coast often ask me: "Should I register my trademark with the U.S. Trademark Office or in with the state in which I do business?" My laconic answer is: YES!

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods/services.

On the other hand, you can register your mark with the state in which you do business. The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods/services.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee.

For more information on state and federal trademarks, contact a trademark attorney.

Before applying for a trademark, carefully consider the goods and services with which you plan to use your mark. It is better to be precise, otherwise you may lose your trademark protection.

During the application process and before the issuance of a registration number, a trademark applicant must declare whether the mark will be used in connection with all the goods or services listed in the application. Afterward, the trademark owner must periodically make similar declarations in order to renew the registration.

In the U.S., you can only register a mark for actual use. For example, you cannot declare that the mark is used in conjunction with all types of apparel when you only use the mark with accessories for women. Recent decisions from the Trademark Trial and Appeal Board (TTAB) suggest that inaccurate declarations of use may be considered fraudulent and invalidate the trademark in its entirety. Although fraud normally requires a willingness or knowing element, the TTAB has reasoned that trademark applicants are in a position to know whether their declaration of use is accurate. Therefore, any inaccuracies may amount to fraud.

Every line in the application form has legal significance! Carefully examine and document how you use or intend to use your mark in order to avoid an inaccurate declaration of use on your application. By omitting uses on your application or renewal, you may lose protection for the mark in connection with that particular good or service. But by being over inclusive, you may end up with no protection at all.

For assistance with registering trademarks or for information regarding proper filing methods, contact a competent trademark attorney.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to choose the base, column, and capital combination.

The logo you see here has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office. In addition to the logo's design, the colors, blue and white, are essential features of the trademark.

First used in commerce in 1985, the mark identifies the brand and appears on the Worthington Millwork website, as well as their on their product catalog and company literature. For nearly 20 years, Worthington Millwork has been providing residential and commercial customers with architectural columns, wall niches, and many other functional and decorative architectural details.

Registering your company name or logo provides several benefits such as notice of your ownership and allowing you to bring an action in federal court if someone uses your trademark with the same goods or services for which it is registered.

Do you have a unique logo or name for your business? Consider contacting a trademark attorney to help with the process.

Have you ever said, "Wrap it in cellophane" to ask for your food to be wrapped in plastic? How about, "Kleenex is softer to blow your nose" to recommend facial tissue to a friend, or "I need a xerox of this report" to request a photocopy of your document?

Cellophane, Kleenex, and Xerox are all trademarked brand names. By using a brand name to describe a generic product, you may be furthering trademark dilution.

Dilution occurs when a trademark becomes so overused that the trademark starts to identify a product itself, rather than the brand or company behind the product. Personally, I find that to be the case with "Band-Aid" and "Google." Why? Because we over-look the fact that the plastic bandage for our paper cut was not, in fact, made by Johnson & Johnson, even if we did ask for a Band-Aid. In addition, how many other Internet search engines are used when we're asked to "Google it"? Compare this with consumers' attitudes to other products: watch how noses turn up to cola that did not originate from the Coca-Cola company!

If a trademark becomes too diluted, it may become a generic term and lose protection under trademark laws. Companies on the verge of losing their protected status due to dilution will often launch extensive and expensive campaigns to prevent the public from using their trademarks in a generic fashion.

Are you concerned about the dilution of your trademark? Contact a trademark attorney for a consultation.

During the week of June 22-27, 2009, inventors and innovators gathered in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosted this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event was open to the public and included dexhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.  Interested parties were able to attend Innovation Week as a spectator or were able to take a more active role in the event by participating as a keynote speaker, technology specific presenter, and patent exhibitor.

"Pseudo mark" is a designation the U.S. Patent & Trademark Office assigns to marks that has an alternative meaning or spelling. For example, if the mark was comprised of H2O arranged in a cascading manner, the pseudo mark field in the USPTO database might display the mark as "water fall."

The USPTO assigns pseudo marks in their database to assist in the trademark search process.

The pseudo mark label does not show up on the registration certificate, and this categorization has no legal significance.

The trademark application can only be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. The applicant may be any person or entity capable of suing and being sued in a court of law. "Entities" includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law.

If the president of a corporation is identified on a trademark application as the owner of the mark, when in fact the corporation is the owner, the application is void, because only an owner can file an application. However, if the president and a related company both use the mark, the president will be permitted to be named the owner, if in fact he or she really is using the mark.

If the applicant owns all (or substantially all) of the related company in such a way that he or she controlled that company's activities, there is unity of control, meaning that the the applicant and the company are considered to be a single source, and either could be named as the trademark owner for purposes of trademark application.

For more detailed rules on the trademark process, refer to the TMEP (Trademark Manual of Examining Procedures).

Trademark registration is a complex task, with legal implications lurking in every field on the application. Seek the assistance of a trademark attorney to guide you through this process.

The new Pro-IP Act makes current copyright laws more strict, in a sense. For instance, any property used to commit (or facilitate the commission of) a criminal offense involving copyrighted works may be seized. This provision amends §506 of the existing Copyright Act. Also, it makes it unlawful to export unauthorized copies of protected works from the U.S.

The new Pro-IP Act amps up enforcement efforts against counterfeiting and piracy. One of the ways it achieves this is that the Act creates a position, appointed by the President: the Intellectual Property Enforcement Coordinator (IPEC), within the Executive branch. The role of the IPEC is to develop & implement a Joint Strategic Plan to combat counterfeiting and piracy. In addition, the Act increases funding and resources to enforce copyright laws.

Not surprisingly, copyright holders, owners, and registrants are happy about these stricter laws that protect them and their works. However, public advisory groups and those advocating for more access to creative works educational settings are concerned that this new law does not benefit groups that it intends to benefit, namely, the public and students. Some criticisms are regarding the increase in expected litigation, making it cost-prohibitive to give the public or students access to a greater variety of creative works. Another concern is that the PRO-IP Act is of more benefit to big media companies, rather than the public and independent artists.

The new Pro-IP Act is the thankfully succinct nickname for the new "Prioritizing Resources and Organization for Intellectual Property" Act. Its objective is to protect innovation, and to better encourage creative contributions to the U.S. economy. President Bush signed the bill into law on October 13, 2008.

In an age where an 11-year old's act of downloading music can cost his parents a six-figure (and in some cases, seven-figure!) judgment, the new Pro-IP act makes it more likely that these judgments roll into the eight-digit categories.

Downloading music is not the only way that copyright laws can be violated. Any type of "copy and paste" work could be an act of infringement. This has widespread implications as more people, including children, are blogging, sharing ring tones, and personalizing web pages.

Now I've seen it all. ...all except for Elvis, that is. In browsing through the Copyright Office's FAQs, there is an answer to the question posed: "How do I protect my sighting of Elvis?"

Copyright protects creative expression on a tangible medium. That means that the expression must have some element of creativity to be protected. While works like sculptures, paintings, and musical scores are obviously creative expressions; lists and forms are among items that are not, and cannot be protected.

A "tangible medium" is something like paper, canvas, or digital recordings. So while a song you sing outloud is, in itself, not eligible for copyright protection, it can be if you write the lyrics on paper or save the melody to a CD.

So to answer the question about whether a sighting can be protected, the answer is unequivocally "No." However, while the sighting itself cannot be protected, if you took a photograph (a creative expression on a tangible medium), the photograph can be eligible for copyright protection. For the Copyright Office's detailed answer, click here.

Invention submission companies and product development companies help patent and trademark owners license and sell their inventions, products, and services. A cursory internet search of these terms will turn up a plethora of hits. Beware! Like any industry, there are legitimate businesses, and there are scams. When choosing one of these companies, keep these tips in mind:

Tip 1: Be familiar with what you own. If you have an invention, be sure you are familiar with the disclosures and descriptions in your patent. If you have a trademark, be sure that it is registered, and be aware of which specific goods and services your trademark will be identifying. If what ends up on the market is not what your patent or trademark claims to be yours, you might lose out on rights to the marketed products or services.

Tip 2: Research the company. Don't be shy about asking the firm for references and credentials. Once you get this information, follow up with them. Check with organizations like the Better Business Bureau. Find out if there is any pending litigation against them, and what issues are in dispute.

Tip 3: Be careful with your money. Almost every patent and trademark owner is enthusiastic and eager to start mass production and distribution. This excited ambition is easily exploited by dishonest enterprises. Be weary of large fees due in advance. When you do forward your money, know exactly how this money is being used. Have an attorney review any agreements before signing the dotted line. Once the deal is signed, be sure to ask for regular accounting statements, so you know how much in royalties you are earning, and you know which parties have licensed your patents and trademarks.

Licensing, marketing, and distributing your products involves an array of legal specialties, include contract analysis, negotiating licensing terms, and enforcement of ownership rights. Be sure to have an attorney familiar with all these facets to assist you.

In my previous post, I shared strategies the USPTO recommends for doing your patent search. Here are some practical tips I have to offer when doing your own search:

Tip 1: When doing your search, keep in mind that even if you don't find your exact invention, look at inventions that are similar to yours. You will need to cite these similar inventions in your patent application.

Tip 2: Remember that it's the CLAIMS that control what is patented, so verify that your invention has not been described in a prior claim. Use the rest of the patent document to interpret terms used in the claims.

Tip 3: Look at the figures and drawings. Pictures speak a thousand words. Save yourself the grief of reading through a patent document--your invention may be nothing like the patented invention, and you can determine this with one glimpse of the figure. Many people have trouble viewing the figures. You need to download the appropriate software; the links are available here at the USPTO site. I find that an easier way to look at full patents and images is to go to www.google.com/patents, type in the patent number I found from the USPTO database, and download the .pdf file.

Tip 4: When you find a patent that is similar to your invention, take a look at the column labelled "References Cited." These are patents that are similar to the patent you just found. Take a look at the patents under "References Cited" to see if they are similar to your invention too.

Tip 5: Take notes. Once you get into the research, you'll see what I mean! All the patents will begin to look the same, and you'll mix them up. List the name, patent/application number, and the title of the patent at the top of a 3-hole punched sheet of paper. Use the entire page to take notes and make your sketches. Highlight key terms on the patent document itself. Keep everything together in a binder, so you can re-arrange and insert/remove notes as needed.

Tip 6: Learn from prior patents. If the patent examiner finds prior art that makes your invention OBVIOUS or NOT NOVEL, you'll be out of luck. Find a way to distinguish yourself from the inventions disclosed in the claims of the prior patents.

Tip 7: Don't be afraid to ask for help. Find Patent and Trademark Depository Library (PTDL) staff in your state. They are available to provide training on U.S. patent search processes and research tools including the Cassis DVD-ROM system, the PubWEST database, and the USPTO website. You can also contact a patent attorney for advice and assistance.

I've often said that doing a patent search is a lot like making pizza from scratch: they are tasks that require some skill, but the skills can be self-taught or hired. Both tasks can also be excrutiatingly tedious, but they can also be educational and fun.

Before your invention can qualify for patent registration, there are two basic requirements that must be satisfied: your invention must be NOVEL and UNOBVIOUS. This means that it can not have already been invented, and that it can not be an obvious variation of something that has already been invented. The way to find out whether your invention is novel or unobvious is to do a patent search.

You can hire a patent attorney, patent agent, or a patent research firm to do the search for you. This will likely cost you several hundred dollars. In the alternative, you can undertake this task on your own. Here are seven tips offered by the U.S. Patent Office for doing your own search:

Step 1. Brainstorm keywords related to the purpose, use and composition of the invention.

Step 2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.

Step 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification.

Step 4. Read the Classification Definitions to verify the scope of the subclasses and note "see also" references.

Step 5. Search the Issued Patents and the Published Applications databases by "Current US Classification" and access full-text patents and published applications.

Step 6. Review the claims, specifications and drawings of documents retrieved for relevancy.

Step 7. Check all references and note the "U.S. Cl." and "Field of Search" areas for additional class/subclasses to search.

Stay tuned to my next blog post, where I offer my 7 tips to help you along your patent search.

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

One of the biggest misconceptions is that an idea can be patented. Even a Yahoo or Google search about patenting an idea will lead people to believe that this is the case. Often, I will have a creative mind book a consultation with me to discuss patenting an idea for an invention. Truth be told, their ideas usually are very good ones. However, they have no idea how to make or build this invention. For example, if someone told me that a great invention would be a machine that would stop world hunger. Although it's a fantastic idea, unless this inventor knows how to build one, there is no patentable subject matter.

Assuming that this idea for an invention is novel and unobvious, there is a requirement that the inventor can describe how this invention is built or put together. This is because a patent is like a recipe: anyone with skill and knowledge in the field of that invention should be able to pick up a patent, and understand how a workable version of this invention is built.

Just because you know how to build the invention doesn't mean you need a prototype to get a patent.

Questions about whether your invention is patentable? Contact me for a consultation.

The Trademark Expo was held recently at the U.S. Patent & Trademark Office headquarters in Alexandria, Virginia.

Trademarks play a critical role in our marketplace both here at home and around the world. From the moment our GE alarm clocks wake us up, until we turn off our Sony TVs after the late night news, we are bombarded with brand names. The Trademark Expo pays homage to this enormous influence on our choices of goods and services by featuring displays, exhibits, company booths, roaming mascots, and seminars.

The Expo is free and open to the public. All individuals, businesses, and educational institutions that hold a valid registered U.S. trademark are encouraged to apply to exhibit.

Last year's Expo attracted 7,000 people.

Being a patent attorney, I feel the pressure of people's expectations that I be the first to hear about new inventions. While procrastinating on the Internet, I couldn't help but notice a recent article about the Top 10 Wacky Inventions for the Home. It includes a fruit bowl that emits UV light, allegedly to keep fruit fresher for longer, a device that tells you what mood your plant is in, and a waterproof PC.

We've all heard that necessity is the mother of invention, but in this case, the desire for trinkets is the cool big sister coming home from college, and wowing you with what she's learned in Science 101 classes.

Doctor Easy Medical Products' trademark, seen above, was recently registered with the U.S. Patent & Trademark Office. This logo is used to identify a product with a plastic tube that directs a stream of fluid into the ear to flush out ear wax. The inspiration for the term "elephant" came from the fact that the plastic tube was long and flexible, resembling an elephant's trunk.

This logo helps consumers identify Doctor Easy Medical Products as the authentic source for the ear washer, as well as other health & beauty products. To register a logo, name, or slogan that helps consumers identify your goods or services, consult with a trademark attorney.

If you have a trademark you would like registered with the USPTO or with the State of Florida, I would be happy to help you.

How did powdered urine, an artificial penis, and a jock strap have two California entrepreneurs likely to plead guilty to charges of conspiracy to defraud the government?

When those items are the "Whizzinator" and "Number 1," which have been put together to help government employees pass drug tests, that's how.

It has been reported that a truck driver for the Department of Transportation beat mandatory drug testing by using these proxy pee products. In another instance, a Whizzinator customer allegedly used this product to pass a probation officer's drug test.

I was not able to confirm that there was a patent filed for this invention. Assuming that this invention is novel and unobvious (the two most basic requirements for an invention to be patentable), I can't help but wonder: does the use of this invention threaten national security if government employees in certain positions are trying to beat a drug test? If so, it could mean that an application was filed, but the government issued a secrecy order, preventing the publication typical of most patent applications. Specifically, Sec. 115 of the Manual of Patent Examining Procedures states:

If the agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

I did, however, see that the term "Whizzinator" is a federally registered trademark (Reg. #2782181).

In spite of the registered trademark, prosecutors are seeking to take control of the Internet domain names, http://www.whizzinator.com/ and http://www.gonumber1.com/. Check them out while you can!

If a distinct logo, name, or slogan is used to identify goods or services, the first one to use that trademark is entitled to ownership of that trademark. However, the rights associated with ownership of that mark are limited.

It is thus highly recommended to register the trademark. For a reasonable filing fee, registration offers many other benefits to the owner. Examples include the right to sue for infringement, and getting the clock ticking on the five-year wait before the trademark achieves an "incontestable" status.

Whether offering goods or services at a local or world-wide level, registering a trademark is always recommended. So where should a business begin this process?

If doing business in only one state, then trademark registration should be done with the Department of State. This is true for small businesses and growing chains alike.

Once a business markets and promotes to consumers across state lines, it becomes eligible for federal trademark registration at the U.S. Patent & Trademark Office. This has been an integral step in business growth and franchising. However, it is recommended that the trademarks are also registered at the state level where the business is conducted. In the event that a competitor infringes upon that trademark, then remedies at both the state and federal level may be available.

Despite the fact that there is no such thing as an "international trademark," filing an application for a U.S. trademark can lay the foundation for applying for trademark registration in other countries. There are procedural requirments involved, so consultation with a trademark attorney is advised.

In order for your trademarks to be eligible for registration at the U.S. Patent & Trademark Office, your goods or services must be offered to consumers in more than one state. This is an easier endeavor for businesses with high visibility and high accessibility to the public, like restaurants, gas stations, hotels, etc. However, internet sales and marketing across state lines can qualify as doing "interstate commerce."

For businesses catering only to their home state, they ought to register their trademarks at the state level.

When considering a trademark to identify your goods or services, it is always a good idea to see if that trademark is already in use by someone else, and to what extent this trademark is being used. This is particularly important if that other party is a direct competitor.

This is done by doing a trademark search. The U.S. Patent & Trademark Office has a database, as do most Departments of State. However, other databases and resources should be checked as well. This is because the proper owner of a trademark is not the first party to file for registration, but the first one to use it in commerce.

Trademark searches can be performed by a attorney or by private firms that specialize in this service. In any event, find a professional competent in trademark searches to perform this service for you.

No. Anyone can file their own trademark registrations, but it is highly recommended that you seek legal advice to help you with the process. This is because a trademark lawyer will be familiar with procedural and substantive requirements of filing an application for registration. Having an attorney help you can save time, money, and potentially, grief involved in the application process.

While registering your trademark is not mandatory, registration offers many advantages. The following only scratch the surface at the benefits of trademark registration:

It gives notice to the public and to your competitors that you claim ownership of the trademark. An owner of a registered trademark is presumed to be the rightful owner, unless proven otherwise.

If someone else tries to use the same or a similar trademark, you can then assert your ownership rights. This can be accomplished by sending a cease and desist letter or filing a claim for infringement.

You can allow others to use your trademark by licensing the rights to use your trademarks. You can control the way your trademark is used: for particular purposes, in certain places, or for a given length of time. This strategy is fundamental in business growth, business development, and franchising.

Registration with the U.S. Patent & Trademark Office provides a basis for you to apply for trademark registration in other countries. On a related note, you can prevent infringing foreign goods from being imported.

Service marks are names, logos, slogans, and other marks that identify the source of a service. Legally, they are the same as a trademark, which is a mark that identifies the source of goods. The terms "service mark" and "trademarks" are often used interchangeably.

While the "SM" symbol is sometimes used to denote a service mark, "TM" will do just as well. However, once registered with the U.S. Patent & Trademark Office, the "R" symbol is used.

Often, businesses will have both service marks and trademarks. For example, visitors at Disney theme parks who want to avoid the long line for attractions can make a reservation, and get whisked to the front of the line at their designated time. Disney named this service, "FASTPASS," which is a registered service mark. On the other hand the mark, "Mickey Mouse" has been in use since the 1930s, to identify goods like cartoons and comic strips.

"Can I get a patent on an invention that combines two or more old inventions?"

The answer depends on whether combining existing inventions creates new and unexpected results. This satisfies the U.S. Patent & Trademark Office's requirement that an invention be novel and unobvious. Novelty and unobviousness can be achieved if the components cooperate to achieve a benefit that the components could not achieve alone.

For example, combining a pencil with an eraser on the end offers the benefit of writing compositions faster than if the pencil and eraser were separate components. The advantages of the pencil cooperate with the advantages of the eraser to provide an additional benefit when they are combined.

However, the combination of your toothbrush, your comb, and your nail clippers do not cooperate to offer something more than if you used each item individually.

In effect, if your creation involves combining separate inventions, you could be eligible for patent registration if your invention as a whole offers more benefits than do the sum of its parts.

Businesses often use their business name to create a logo. Both the name and the logo are trademarks identifying goods and/or services. Should they be filed on the same trademark application?

No. Even if the logo is a stylistic version of the business name, if they can be used separately, they should each be filed on separate trademark applications. Filing an application for the logo protects only the graphic representation of the business name. To protect the business name itself, separate trademark registration will protect the use of that name, regardless of the font, color, or manner in which the business name is being presented.

Newly appointed Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office David Kappos has wasted no time in getting down to business in his new post. Mr. Kappos has moved to cancel a hotly contested regulations package under consideration.

The so-called Continuation Rule, Request for Continuing Examination Rule, and Claims Rule were all supported by the previous USPTO administration. These provisions placed caps on the number of continuing applications and RCEs per parent application, and the number of independent/total claims in an application.

I'm glad to see that these rules will not take effect because they limit an inventor's options during patent prosecution and reduce the protection he or she can secure. Why impede technological progress for minimal gains in USPTO efficiency? Mr. Kappos clearly made the right play here!

Consult a patent attorney to find out the exact boundaries of current patent law!