If you have ever worked for an employer, you probably signed an employment contract with an intellectual property clause that obligates you to assign any and all intellectual property created by you (the employee) in the course of your employment, or in relation to a certain field. This may not seem like a big deal to you as an employee (and it might not matter or ever apply to you), and sometimes it is necessary to agree to all of the terms to an employment contract in order to get the job. But if you are an employer, it is important to prepare proper assignment agreements and maintain a good record of executed assignments.
Last time, we talked about making voluntary amendments to trademark applications (i.e., not in response to office actions). One of the most common reasons to submit a voluntary amendment is to fix clerical errors - for example, to correct misspellings in a mark. While these types of amendments may seem like no big deal, it is important to be aware that the amendments may not be accepted by the USPTO.
If you are a practitioner, design applications are like your free throws. They are relatively straight forward to prepare as long as you're working with a legit patent illustrator, and the examination process is pretty seamless. I recently received a notice of allowance for one of my design patent applications (yay). But looking through the notice of allowance, I noticed that the examiner made an examiner's amendment and objected to the drawings.
I was recently asked to file a trademark application for someone who had a registered trademark that went abandoned for failing to pay maintenance fees. Enough time had passed that I could not revive the registration and the only way to obtain any trademark rights again was to reapply and presumably re-register the application. I was told that this would be a "super easy job" that was "very simple to do."
But it is often easy to underestimate the amount of work required and oversimplify things.
Whether I am representing a trademark owner or a trademark infringer, my clients want to know what to expect in a trademark dispute. And every trademark dispute has distinct stages that plays out pretty similarly. Disputes that I handle commonly involve the following stages:
If you have ever used TEAS (trademark electronic application system), you might have noticed that the user interface is pretty dated and not very user-friendly. The text boxes, in particular, only allow you to see a few lines at a time so if you're typing in a lot of information (particularly for goods and services description), it can be difficult to keep track of what you're writing. Different parts of the application are also separated into different pages so you also have to make sure to go back and check your work before submitting your application. Once you file your application, you can read through your filing receipt to review the information you've provided in the application. Here is when you might find out that there is a mistake on the application. If you happen to make a mistake, what should you do?
First thing to keep in mind that there's really nothing you can do for about a week. This means that if you discover your mistake right after submitting your application, you will have to wait until your application is processed into the system.
Although I am a big supporter of patents, there are times when patenting is not the best option. It can be a little strange for my clients to hear me say that they should not file a patent application, but many are unfamiliar with alternative ways to obtain protection. Especially in cases where patenting would most likely be unsuccessful (despite having a lot of resources to navigate through patent prosecution), it would be smart to explore one or more of the following options.
Many of us express ourselves through style. For example, some of us wear shirts with funny sayings, and some of us drink coffee out of mugs with meaningful quotes. Naturally, many people want to protect sayings that they come up with so that they could be the only one to put certain sayings on certain items (usually t-shirts). How can you protect these sayings? Can you trademark sayings on shirts/mugs/accessories? Depends on whether these sayings can serve as a source identifier.
One of the most gratifying moments of my practice is when I receive a thick, heavy, manila envelope in the mail from the USPTO. By now, I know, just by the feel of an envelope, that inside of it is a registration certificate of an issued patent printed on premium grade paper, beautifully bound like an old-school magazine. So imagine my heart burn when I have to file a reissue application.
A reissue application is generally filed to correct an error in the patent. MPEP 1402. The most common bases for filing a reissue application are:
Apple unveiled its Series 2 Apple Watch almost two weeks ago, on September 7, 2016. If you were late to a coffee meeting because you were watching the entire keynote like me (and mentally calculating how much you were going to spend on all the new gadget), you know about the water expulsion feature of the new Watch. Today, the USPTO granted Apple its patent for this feature, again about two weeks after the unveiling. How did Apple obtain the patent just in time (pun intended) for the release of its product that is claimed in the patent?