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Can I use the same business name as someone else?

We frequently are asked by clients or potential clients if they can use a trademark or business name that is the same as a pre-existing company.  The answer is that it depends.  Trademark law protects the source identifying function of a trademark, trade name, product trade dress, or any other “name, symbol, or device, or any combination thereof” that is “likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  See 15 U.S.C. 1125.

Thus the typical test for trademark infringement is if there is a “likelihood of confusion” between the marks.  Each Federal Court of Appeals has developed its own test for likelihood of confusion; in the Ninth Circuit the test is called the “Sleekcraft Test” as the likelihood of confusion test for trademark infringement is set forth in the case of  AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).  The factors of the Sleekcraft Test are as follows (as taken from the Ninth Circuit Model Jury Rules):

(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.

(2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.

(3) Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.]

(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.

(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.

(6) Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.

(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.

(8) Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.

(9) Other Factors. (any other factors the jury may consider)

Typically the first four factors above are the most important factors.  If the trademarks are the same or very similar, the senior trademark is strong conceptually, and the goods are the same or very similar, there is a higher chance a court or the Trademark Office will find a likelihood of confusion.  Conversely if the senior trademark is weak and the goods are not related, there is a lower chance of a finding of a likelihood of confusion.  The likelihood of confusion test is a sliding scale that assesses all of these factors to determine if there is a likelihood of confusion between two trademarks (or event the same trademark on two goods).  Because this test is very factually intensive and requires a significant amount of legal analysis, we recommend that if you have a question regarding the selection of your trademark and if it creates a likelihood of confusion, to contact one of our trademark attorneys.

t-shirt slogans, designs, and trademarks

We are often asked by clients “can I trademark my t-shirt design?”

The answer to this question is that it depends.  Trademarks protect the source identifying function of a name, word, or symbol.  Thus if you use a name that identifies the source of your t-shirt or clothing, you likely can obtain a trademark registration on the name.  However, on the opposite end of the spectrum, if you are using a design or slogan as a purely ornamental feature of the t-shirt, the trademark office likely will reject your trademark application as being ornamental.  The Trademark Manual of Examination and Procedure (TMEP) provides the following guidance on the spectrum of ornamental registrations:

  • (1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated.
  • (2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods.
  • (3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
  • (4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register.

If you do receive an ornamental rejection, the United States Patent and Trademark Office provides guidance for overcoming the rejection.  Additionally, the attorneys at Shaver and Swanson have successfully argued against ornamental rejections for clients in prosecuting trademarks in the Trademark Office and are available to assist you with prosecuting your trademark application.

If you do have a new design to utilize on your t-shirt, it may also be possible to seek copyright protection for your design, but this applies only to designs as opposed to slogans, phrases, or words.

Copyright infringement of building or house plans

Can I get a copyright in house plans or building plans?

The short answer to this question is yes.  However, the copyright only extends to those elements of the buildings plans that are original.  Determining what is an original element can be a complicated legal question.  While a

What is copyright infringement of a house plan or building plan?

In order to prove copyright infringement, the copyright owner must prove that the accused copied the protected elements of the copyrighted work.  Any copying of non-original material or material that is in the public domain is not included in copyright infringement.  To determine copyright infringement, a court or jury determines if the two works are substantially similar and thus if there was wrongful copying of the copyrighted work.  The test for substantial similarity, according to one court, is whether “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.”

The amount of protectable elements in a building plan or house plan typically depends on how original or complex that building plan or house plan is.  For example, the Guggenheim Museum in New York City would be considered a complex architectural work.  However it is substantially more difficult to find protectable elements in the house plans for a middle class home in what is considered a “cookie cutter subdivision.”  Further, the more unique a house plan is the easier it is to prove wrongful copying whereas the less unique and/or more generic a house plan is, the harder it is to prove wrongful copying.

For example, in Zalewski v. Cicero Builder Dev., Inc., the Second Circuit court of appeals noted that generalized notions of where to place functional elements, how to route the flow of traffic, and … methods of construction” are un-protectable. Architects cannot claim that good engineering is original to them—or at least can get no copyright protection for it and there is no copyright in a building plan’s design parameters. Constraints placed on an architect by the way her client plans to use the building do not originate with the architect.  The Second Circuit went on to hold that the architect can get no credit for putting a closet in every bedroom, a fireplace in the middle of an exterior wall, and kitchen counters against the kitchen walls. Furthermore, the overall footprint of the house and the size of the rooms are “design parameters” dictated by consumer preferences and the lot the house will occupy, not the architect.  Similarly features that are features of all homes of a certain style are not copyrightable.

The attorneys at Shaver & Swanson, LLP have handled numerous cases involving allegations of copyright infringement of house plans and/or building plans for both Plaintiffs and Defendants.  If you have any questions regarding copyrights in house plans and/or building plans, please do not hesitate to contact us.

Is this trademark bill I received a scam?

We frequently are asked by clients if a trademark bill they received in the mail or through fax is a real bill.  Typically these direct bills are scams, but if you receive a notice you should double check with your trademark attorney to be certain it was not an error on behalf of the U.S. Patent and Trademark Office or a miss-sent communication from a foreign trademark office.

When we file your trademark application with the U.S. Patent and Trademark Office, we designate our office to receive all further official correspondence.  While we list our office for correspondence, the Trademark Office publishes your trademark application, along with your address, which third parties can obtain through the Trademark Office’s website.  There are a wide range of different third parties with different offered “services” from including your trademark in their publication to being a direct scam in which the third party seeks payment from you for some alleged service it provided.

The U.S. Patent and Trademark Office maintains a list of non-USPTO solicitations here.  If you are contacted by any of the listed companies, do not pay the bill they send you.

In sum, you should view any third party trademark bill as being a scam unless proven otherwise.  Do not pay any “bill” you directly receive without first discussing the bill with your trademark attorney.

Should I get a patent or keep my invention secret?

Inventors and companies often ask if they should file for a patent or keep their invention secret and protect it as a trade secret.  The answer depends on the facts of each situation.

Patent protection is federally provided right that an individual or company files an application to obtain.  Patents give the patent holder certain quasi-monopoly rights in the invention, including the rights to keep others from making, selling, importing, or offering to sell the patented invention.  However, patents come with a cost both monetarily and in that patents only have a limited lifespan of 20 years.  Patents can be particularly important, for example, if a product is simple to reverse engineer, in technical fields in which there are low barriers to entry, or if it is not possible to keep the idea a “secret”.

In contrast to patent law, trade secret protection is generally protected by state law.  Under Idaho Code 48-801(5)Trade secrets can include any “information, including a formula, pattern, compilation, program, computer program, device, method, technique, or process that:

a)  Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

b)  Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Factors that courts generally consider in determining if information qualifies as a trade secret include:

  • The extent to which the information is known outside of the claimant’s business
  • The extent to which it is known by employees and others in the claimant’s business
  • The extent of measures taken by the claimant to keep the information secret
  • The value of the information to the claimant’s business and in the industry.
  • The amount of money and effort need to develop the information.
  • The difficulty a third party would face in independently developing the information.

Trade secrets are theoretically protectable indefinitely, however trade secret protection is very limited and difficult to prove.  Trade secret protection does not prevent third parties from reverse engineering the idea to determine the composition of the “secret”.  Trade secret protection only provides protection against misappropriation  of trade secrets, meaning only if a third party actual misappropriates the trade secret (meaning only if the third party steals the secret or obtains the trade secret knowing or having reason to know that the trade secret was misappropriated through improper means.  The Uniform Trade Secret Act (UTSA) has been enacted by numerous states (forty or more) including the state of Idaho.  Idaho’s trade secret act is located at Chapter 8 of Title 48 of Idaho Code, and can be found here.

 

Do I need a patent, a trademark or a copyright?

Patents, trademarks, and copyrights are categories of intellectual property rights, each with its own form of protection:

Patents protect the way a device works (a utility patent would protect for example the mechanism by which your car brakes operate) or the appearance of a useful object (a design patent would protect for example the shape of a Coca-Cola bottle).  Patents are protected through a patent grant from the government, as opposed to trademarks and copyrights which, for the most part, are protected to an extent without the absolute need for a government registration.  Patents confer a negative right, which allows a patent holder to prevent others from making, using, offering for sale, or importing an invention, but does not confer the rights to make or use an invention on the patent holder.

A trademark or service mark protects the association of a mark identifying the source of the good(s) or service(s).  Trademarks occur in a variety of forms, from traditional trademarks such as brand names or designs to non-traditional trademarks such as colors or shapes.  Actual product configurations can be protected as trade dress if the features are non-functional and have come to identify the source of the good.  Trade dress protection can overlap with design patent protection.  Common law trademark protection typically arises from use of a trademark.  However, obtaining a Federal trademark registration serves to perfect the protection and provides a registrant with nationwide constructive priority of use.

A copyright protects an artistic expression of an idea.  Copyright generally means what the name implies–it protects against copying.  For example, a copyright in a photograph of a mountain protects that specific photograph of the mountain.  Copyright does not protect against another going to the exact spot the photograph was taken and trying to take a similar photograph.  Thus copyright protects the individual artistic expression embodied in the first photograph, but not the idea of taking a photograph of the mountain.  A copyright springs into existence whenever copyrightable material is affixed to a tangible medium of expression (for example, when a digital photograph is saved or when a new audio tune is recorded).  However, a copyright registration provides the registrant with the ability to choose statutory damages in lieu of actual damages (which can be difficult and expensive to prove) and with an easier opportunity to collect attorneys fees in the event of a lawsuit.

Can I change the device 10% or 15% and not infringe a patent?

The short answer to this question is NO, patent infringement is not based on a percentage of how close to the original your device is.

Patent infringement is determined by comparing the claims of a patent to the accused devise.  If the device has all of the elements of the patent claim, it is deemed to be an infringing device.  If the accused device does not have all of the elements of the patent claim, it is likely not infringing.

There is one caveat to the above analysis, the doctrine of equivalents.  Patent infringement can either be literal infringement or infringement under the doctrine of equivalents.  Literal infringement occurs when a device literally infringes the claims of the patent, or in other words when the accused device literally has all of the elements of the asserted patent claim.  Infringement under the doctrine of equivalents occurs when any differences between the claimed invention and the accused product are insubstantial.  One way of showing infringement under the doctrine of equivalents is when the accused claim elements or limitations “perform substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.” (citation omitted).

Thus, the question of patent infringement is more detailed than “can I change 5%, 10%, 15%, 20%, 25% etc. of the patented product and not infringe?”  The question is does the accused device contain all elements and limitations found in the claims of the patent.

What is the purpose of a patent?

United States Patent law sets forth “whoever without authority makes, uses, offers to sell, or sells any patent invention, within the United States or imports into the United States any patent invention during the term of the patent therefor, infringes the patent.”  35 U.S.C. § 271.  Patents also give you the right to prevent others from selling a component of your invention

Determining if a patent infringes requires an analysis of the claims of the patent as applied to the accused device.  If the accused device has all of the elements found in any claim of the patent, the device infringes the patent.  This is called the “all elements” rule of patent infringement.  For example, if claim 1 of a patent claims elements A+B+C+D, if the accused device has elements A+B+C+D it infringes the patent.  Similarly, if the accused device has elements A+B+C+D+E+F it still infringes on the patent because it has elements A+B+C+D.

If someone is infringing on your patent you may be able to get an injunction, royalties for the sale of the device, damages for your losses due to the infringement, and/or enhanced damages and attorney fees (provided the infringement was willful).  Often a cease and desist letter suffices to halt the infringement, but in some cases the patent owner is forced to proceed to court action to stop the infringement and enforce their patent rights.

Owning a patent can be key to protecting your investment in your technology, particularly if your invention becomes successful.  Companies that you may want to license your invention too will often not even listen to your idea unless you are patent pending.  We highly recommend that you discuss obtaining a patent with a patent attorney (either a patent attorney at our firm or elsewhere) before you go forward with publicly using or selling your invention.

Patentability requirement – Nonobviousness

The term nonobviousness is a legal term of art in the patent world.  The question is would the invention have been obvious to  a person having ordinary skill in the art (a PHOSITA) at the time of invention.  While this appears to be a simple question, it requires a significant amount of analysis to determine if an invention is obvious or if it falls under the non-obvious category and thus suitable for being protected by a patent.  The Manual of Patent Examination and Procedure (commonly called the MPEP by patent practitioners) defines the obviousness bar as stating “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”  See MPEP 2141.

The framework for deciding what is, or is not, obvious was set forth by the United States Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).  In sum, the considerations set forth by the U.S. Supreme Court focus on if a PHOSITA faced with a problem would be led, in the ordinary course of proceeding to solve the problem, to the Applicant’s invention as claimed.  If the invention provides more than just a combination of known elements in a new form, it may be patentable.  If the invention provides a combination of known elements in a new form and provides unforeseen results, the invention may be patentable.  The non-obviousness requirement to obtain a patent is assessed on a case by case basis that can quickly lead to a very complex procedure.   If your invention as claimed receives an obviousness rejection, there are a variety of arguments that, depending on the rejection itself, can be used to overcome these rejections.  Additional evidence of nonobviousness, called “secondary considerations of nonobviousness,” can also be used to overcome a patent examiner’s obviousness rejection.

Each foreign country or entity has its own requirement akin to the nonobvious patent requirement set forth in the United States.  In Europe, a comparative term is the “inventive step” requirement, meaning did the inventor have to undergo an inventive step to reach the application.  Each of these individual countries has a different standard for determining what is patentable, and it may be easier in some countries to obtain a patent and more difficult in other countries to obtain a patent.

Our patent attorneys can assist you in overcoming an obvious to try patent rejection or to draft your patent application to try and avoid these patent rejections whether you or located in Boise, Idaho, elsewhere in the United States, or abroad.

Patentability Requirement– Novelty

One of the requirements for receiving a patent on an idea is that the idea must be novel, or new.  This requirement is found at 35 U.S.C. 102.  In general, the novelty patent requirement means that the idea as claimed in the claims of a patent application is not found in a single reference that pre-dates the date of filing of the patent application.  A reference is considered as “anticipating” an invention as claimed if the reference has all of the elements, either expressly or inherently, of the invention as claimed.  If the invention is novel, it has one or more elements or a combination of elements that is/are not found in a single prior art reference.

The Manual of Patent Examination and Procedure (or MPEP as it is commonly called by patent attorneys and practitioners) states that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”  See MPEP 2131.  In order to overcome a novelty patent rejection, typically an inventor must show that each element found in his or her patent application claims is not found in the single reference cited by the patent examiner.

Typically a patent search performed by a patent attorney will provide you with an accurate  opinion on whether or not your invention is novel and the potential for obtaining a patent from any patent application you file.

 

Patentability requirements – Useful Requirement

In order to obtain a patent on an idea, that idea must be “useful.”   In other words, the idea must have some useful purpose.  The “useful” patent requirement is a low standard and typically easy to meet.  Typical exceptions to the useful requirement occur in perpetual motion machines, which do not serve a typical “useful” purpose and chemical compounds that have no known use.  Useful rejections are rarely encountered when filing a patent application.

When should I file for a patent?

If you have an idea that you view as worth protecting, you should file a patent application before you disclose the idea to any third parties.  In the United States, you have a 1 year grace period from the time you publicly use, disclose, or offer for sale your idea to file for a patent.  If you wait past that time, your idea is deemed to be in the public domain and you are barred from obtaining patent protection.  Many foreign countries do not offer any grace period and any public disclosure prevents you from obtaining a patent application.

The U.S. and most, if not all, foreign countries use a first to file patent system.  This means that the first person or company to file a patent applications gets the patent, regardless of who invented it first.  One exception is that if the inventor can prove that the earlier filer derived (or stole) the invention the subsequent filer is entitled to the patent.  The first to file system has placed an added importance on filing as soon as possible.

The purpose behind the patent system is that in exchange for you disclosing your idea to the public to further the arts and sciences, the law provides you with a 20 year pseudo-monopoly on your idea.  This gives you a 20 year exclusive right to sell your idea, use your idea, offer to sell your idea, to make your idea, and to import your idea.  After the 20 year period, your idea becomes a part of the public domain for anyone to use.  If your idea is already in the public domain, their is no incentive for the government to provide you with any exclusivity in the idea in exchange for your public disclosure of the idea.

Foreign Patent Protection

How do I get a patent in a foreign country?

In order to have patent protection in a foreign country, a person or company must have a patent in whatever entity or jurisdiction provides patent rights in that country.  This can mean having a patent in each individual country or obtaining a patent through a broader protection entity, such as the European Patent Office (or EPO).  There are several mechanisms to obtain a patent in a foreign country, the most common method for our United States clients is to file a U.S. patent application (either a provisional or non-provisional U.S. patent application) to obtain a priority date, and within a year file a PCT (patent cooperation treaty) application that designates potential future countries or entities in which the patent applicant intends or is considering seeking patent protection in.  Within 30 or 31 months (this time frame depends on the rules of the foreign country in which protection is sought) from the date of filing, the patent applicant must file separate patent applications in each individual country in which patent protection is sought.  This is typically considered filing a national phase entry application.  The stage of national phase entry is typically the most expensive phase as the patent applicant must hire patent attorneys or agents in each of the countries or associations in which protection is sought.  Alternatively, a patent applicant can file directly in individual countries and not file a PCT application.

The attorneys at Shaver & Swanson, LLP have filed for patent protection in a wide array of foreign countries, including Brazil, Canada, Mexico, Turkey, Australia, China, South Korea, Japan, and wide range of European countries including filing EPO patent applications for protection in the European Union (EU).  Our attorneys are adept at counseling on and obtaining foreign patent protection.

State and Federal Trademark Registrations

Should I get a state trademark registration or a federal trademark registration?

Both state trademark registrations and federal trademark registrations are very beneficial to both individuals and companies.  State trademark registrations typically provide constructive priority throughout the state in which the registration is obtained.  Similarly, federal trademark registrations provide nation wide constructive priority.  A company or individual should typically obtain a State trademark registration when they are involved in intrastate commerce meaning they operate solely within one state and/or are local companies.  Typical examples would be small, non-online stores, lawn care companies, beauty salons, and local restaurants and bars.

Obtaining a federal trademark registration requires that the company be involved in interstate commerce, or commerce that crosses state lines including if the company has an internet business presence.

Obtaining a federal or state trademark registration can be very beneficial to a company.  This includes providing priority over subsequent, or junior, users in the event the trademark registration holder expands to a new market.  If there is a company using the same trademark in that market but it is a junior user, the trademark owner may be able stop the junior user from using the mark.  Similarly, if a large company begins using the trademark after your use of the mark, it is much easier to prove that the trademark registrant’s use of the mark pre-dated the subsequent user’s use if the trademark registrant possesses either a state or federal trademark registration pre-dating the subsequent user’s first date of use.

At Shaver & Swanson, LLP we highly recommend trademark users obtain either a federal or a state trademark registration, or in some situations both, to protect their trademark rights.

 

What is a Federal Trademark Registration?

A Federal trademark registration (as opposed to a state trademark registration or common law trademark rights) provides constructive nation-wide notice that you are using a mark on the goods and/or services listed in your trademark registration.  In sum, the U.S. Congress expanded common law trademark policy through the enactment of the federal trademark registration system. The federal trademark registration system provides constructive notice to other participants in the marketplace and prospective participants in the marketplace that a registrant is using the federally registered trademark and the federal registration system establishes priority in the rights afforded to the registrant. Federal trademark registration benefits the registrant by providing nationwide notice that the registrant is using the mark, benefits participants in the marketplace by allowing the participants to “rely upon a search of the trademark registry and their own personal knowledge of whether the mark has been used so that what may be substantial expenditures of money promoting the mark will not be wasted,” and benefits the consumer by allowing the consumer to rely on a trademark of a good in making a purchase without having to worry about purchasing a good of different quality than expected. Natural Footwear, Ltd. v Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3rd Cir. 1985)

In sum, a Federal trademark registration provides your company with a legitimate priority date and, in the event other companies unknown to you have been using the mark, locks in the territory of those prior users. Without a federal trademark registration, it is a race between the parties to establish customer recognition, i.e. secondary meaning, of the unregistered mark in unoccupied territory.

Common law trademarks

How do I get a trademark?

While a Federal trademark registration or a state trademark registration is greatly preferred, in general, Trademark protection ensues under the common law of trademarks as soon you begin using the name, but only as far as the area in which you are using the mark, provided that the trademark is protectable and not a generic word for your goods or services.  The U.S. Supreme Court described this principle in stating that a mark is protectable as far as it is known, but this protection does not sch to markets where goods bearing the mark have not traveled.  For example, a small hair salon in the North End of Boise, Idaho may have rights in its name in the North End, or perhaps even as wide as the entire Treasure Valley depending on its marketing and client range.  However, this hair salon may not be able to protect its name as far away as Portland, Oregon, New  York, or California.

The United States Supreme Court described the principle of trademark law and set forth the boundaries of common law trademark rights in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). In Hanover, the United States Supreme Court illustrated that the purpose of trademark law is to protect the good will of a trade or business by identifying “the origin or ownership of the article to which it is fixed.” Id. at 412. The rights afforded to an entity through its trademarks grow out of use of the trademark and through the good will that becomes associated with the trademark. Id. at 413. Trademarks are treated as merely a protection for the good will associated with the mark, and not the subject of property except for the limited extent the marks are used in connection with an existing business. Id. at 414. The United States Supreme Court in Hanover summarized the geographical limitation of a trademark when it stated “the mark, of itself, cannot travel to markets where there is no article to wear the badge and no trader to offer the article.” Id. at 416.

In order to obtain trademark rights under the common law for a descriptive trademark, your mark must have acquired secondary meaning.  This means that the consumers in an area associate that mark with your business or product, as opposed to associating the mark as a description of the goods or services you offer.

The Internet has greatly complicated the analysis of how far a common law trademark’s rights stretch.  Does an online company who has a few sales across the country have nation-wide rights?  Probably not, but determining just how far those rights stretch is a very complicated, expensive argument to make in court.

State or Federal trademark registration greatly helps in clarifying rights and puts others on notice that you are using your trademark and helps to avoid the expense and issue of proving a common law trademark.  Please do not hesitate to contact us to assist you in furthering the protection of your trademark.

Patents Bob Shaver and Scott Swanson have obtained

Recently issued patents.

Foreign trademark protection

What if I want to have my mark registered in other countries?

  • If your products are to be sold in other countries, you may wish to register trademarks in those countries. A Foreign Trademark Registration is generally acquired on a country-by-country basis, and trademarks registered in foreign countries do not affect your registration of the mark in the United States.
  • If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, rather than filing in each country separately. Filing under the Madrid Protocol can reduce costs considerably if more than one foreign registration is sought.
  • Shaver & Swanson, LLP has a network of international trademark attorneys that can handle your trademark protection needs anywhere in the world.

Utility Patent Protection

What qualifies for utility patent protection?

  • Section 101 of Title 35 of the United States Code states that “any new and useful process, machine, or composition of matter, or any new and useful improvement thereof” can be the subject of a patent. This can include new devices, new methods or processes, improvements in existing devices or methods, methods of doing business, software, new uses of existing technology, Internet methods of doing business, recipes, formulas and systems.
  • Section 100 of Title 35 of the United States Code defines the word “process” as meaning a process (leave it to Congress to define “a process” as “a process”), art or method, and includes a new use for a known invention.
  • Things which do not qualify for patent protection include: scientific principles, mathematical processes, mental steps, printed matter, naturally occurring articles, mere aggregations of unrelated parts (a pencil with an eraser at one end is considered such an aggregation), and “any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” (42 USC § 2181(a)).

An inventor can file for a provisional patent or a nonprovisional utility patent to protect his or her idea.

Provisional Patent Applications

What is a Provisional Patent Application?

  • The “provisional” patent application system was created after the GATT treaty was signed in 1995. A provisional application may be filed without claims, is not examined or even read by anyone at the Patent Office, and, as the “provisional” name implies, is temporary. A provisional patent application expires exactly one year after filing and unless you file a utility application before the end of that one year period, you may be found to have abandoned your invention to the public domain.
  • The three main reasons to file a provisional application are: (1) in an emergency situation where a filing date is needed to protect rights while a utility patent application is prepared (for instance, getting something on file the day before you show your invention at a trade show), (2) where the inventor needs to limit costs while trying to determine if the invention would be commercially profitable, and (3) where the invention is expected to have a long market life span (the provisional application could, theoretically, add an additional year to the term of the patent.
  • Because provisional applications are not examined, they can never mature into an issued patent. There is no such thing as a provisional patent.
  • It is important enough to bear repeating: a utility patent application must be written and filed based upon the provisional patent application within one year (the life span of the provisional application).
  • A provisional patent application cannot claim priority from another application, foreign or domestic.
  • While provisional patent applications were intended by Congress to make filing easier for inventors, these same applications often become a trap for unprepared inventors. The main traps are: (1) missing the one year date (when a provisional application is abandoned, it is gone forever), and (2) inadequate disclosure (if the disclosure is not clear and detailed, the resulting problems may completely void the application altogether). Provisional patent applications also draw out the patent prosecution process, making it longer until you have an issued patent in hand (your competitors can only “infringe” your patent after it issues).
  • Preparation and filing of a provisional patent application typically costs 1/3 to 2/3 of the cost of preparing and filing a utility application. Then within one year, the inventor must also pay to have a utility application prepared and filed based on the provisional application. This can result in increasing total patent costs at least 1/3 to 2/3 over only filing a non-provisional application in the first place. However, this additional year gives an inventor an lower cost option to be patent pending for a year thus allowing the inventor to gauge market interest on their invention or to seek investors.