I got a phone call the other day from a prospective client who wanted some assistance with preparing and filing a response to an office action. She told me that she’s been spending a lot of time and money on her application and she was really getting tired of getting nowhere. “Do you think you can get my application to register?” she asked. “I’d have to take a quick look at your application first,” I responded. I went on to tell her how I generally handle office actions and gave her an idea of how much I’d charge her for it. Then I told her that I’d take a brief look at her office action and figure out what exactly I would need to do and give her an exact quote. We agreed to speak again the next day.
Many of you probably heard that Sam Smith recently settled a copyright dispute with Tom Petty. Apparently, Tom Petty thought that his song “I Won’t Back Down,” (co-written with Jeff Lynne) sounded a little too much like Sam Smith’s song “Stay With Me.” If you’re like me, you’re probably thinking, “What a complete and utter BS.” Maybe that’s what Sam Smith thought too, but regardless of what he actually thought, Tom Petty and Jeff Lynne were credited for co-writing “Stay With Me.”
Thanks for tuning in again for part two of my story from Benjamin Franklin Inn of Court meeting. This time, we turn to functionality. In short, you can’t trademark something that is functional. For example, you can’t trademark the color yellow gold for gold jewelry, because gold is naturally yellow gold.
There are two types of functionality:
Utilitarian Functionality: A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. This comes from a landmark Supreme Court case, TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Basically, what this is saying is if you have a product feature that is functional, patent it; don’t trademark it.
The other night, I attended Benjamin Franklin Inn of Court meeting and I really liked it. Like, really liked it. We discussed two things about trademarks: tacking; and functionality. Let’s talk tacking first, but stay tuned for part two of this article covering functionality.
Tacking works like this. You have a registered trademark and one day you decide to make it a little hip. Now you want to register your new trademark, and when you’re asked for the priority date, you use the priority date of the registered trademark. Why can you do this you ask? Well because the presumption is, your registered trademark and your new trademark are similar enough that the consumers will think of the two marks as the same mark.
By now I've worked with individual clients, small businesses, large institutions, and everyone in between. But recently, I've been surrounding myself with small businesses, and many of them ask me, “What general advice (in the realm of intellectual property law) do you have for small businesses or start up companies?” So, I decided to come up with a few things that you can keep in mind if you're a small business or a start up.
I've come across many many many strange patent applications, and hence strange inventions, over my career as a patent attorney. And that's saying a lot, because I still have a long ways to go until retirement.
Well, it's only January, but I already came across what could likely be the “patent (application) of the year.” The title of this application is “Planar Waveguide Apparatus with Diffraction Element(s) and System Employing Same,” and it is assigned to Magic Leap, Inc. Apparently, Google lead a $542 million round of funding for Magic Leap to work on augmented reality glasses that can create digital objects that appear to exist in the world around you. Are you impressed?
I’ve been seeing a lot of celebs wear Brian Lichtenberg stuff lately and I’m thinking about snagging a few of these myself. If you don’t know who Brian Lichtenberg is, he is a fashion designer who is known for designing and selling parody wear. Kind of like “Weird Al” of the fashion world, if you will. Take a quick look at his t-shirts and you will do a double take. Homiès (Hermès), Féline (Céline), Brianel (Chanel), and Bucci (Gucci) are some of my favs.
Yesterday, USPTO granted 34 new patents to Apple Inc. One of the patents, U.S. Patent No. 8,934,045, relates to a wearable camera system that can be controlled via a remote. This patent is pretty interesting for a couple of reasons, and seems to stand out from the rest of the patents granted to Apple Inc.
First of all, this patent takes a jab at GoPro cameras, saying that:
[T]he HD Hero2 camera includes only a single image capture system, which captures images using an optical axis directed outward from the ‘front’ of the camera. This can cause excessive wind resistance and presents a high profile that is more susceptible to damage and image artifacts from vibrations in some situations.
Karn, col. 1, lns. 43-49.
I guess the title of this post is revealing of my age. Anyways, I stumbled upon this article on Huffington Post today and I decided to talk about it because it relates to trademark/trade dress even though it doesn't really seem like it.
But first, I have to say that Huffington Post is so damn good at coming up with catchy titles. And sometimes I know they're trying to sucker me in, but I fall for it anyways. One can only be so strong. Articles having titles like, “Justin Bieber Doesn't Look Like This Anymore,” “10 Things That You Must Do Now!” or “Watch This Video of Adorable Puppies” are definitely a must read.
I realize my last post was kind of blah so I figured I’d buckle down and write something more substantive.
By now, I’m sure you’ve heard about the 2014 Interim Guidance on Patent Subject Matter Eligibility. Perhaps you’ve perused through it, or even looked at the subject matter eligibility test for products and processes chart. I saw that this was posted last month on the USPTO website, but I went on a vacation, and didn’t really feel like reading it so I put it off for a couple of weeks. And last night, while I was watching The Millionaire Matchmaker, I decided to finally read it. If you’ve been lazy like me, and you haven’t read it yet, you’re in luck because here’s my quick summary on the new guidance.