My trademark registered in 2006 was canceled in July 2014 due to - registrant did not file an acceptable declaration under Section 8. We have continued to use the mark in commerce. is there a form and fee for reinstatement or do I need to refile t...
Under section 8 of the Lanham (trademark) Act, you had to file the affidavit between years 5 and 6 from the registration date. The statue gives the trademark owner an additional 6 month grace period to file the affidavit with a fee. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. Rather, you need to file a brand-new trade mark application. However, the good news is that trade mark rights are acquired NOT by registration but by usage in trade and commerce. So, when you file your new application, you can state your date of first use in trade and commerce as the date you put in your original application. If someone else has obtained registration for that mark in the interim, you can move for cancellation of their mark at the PTO based on priority of use. I would advise you to consult with an intellectual property attorney first. Good LuckSee question
I've just received a DMCA notice. I sell paintings/prints. I used "Grungy Abstract Painting" to describe some of them. My item descriptions had "artwork" word in it as well. So a company called "Grungy Artworks" filed a trademark notice. But ...
The standard for trademark infringement is “likelihood of confusion.” This means that a trademark owner is entitled to protect not only the exact mark that is used in trade and commerce, but any mark that is confusingly similar to it. There are several factors which are relevant to a “likelihood of confusion” analysis. These include the similarity or dissimilarity of the marks in sound, appearance, pronunciation, etc.; The relatedness of the goods or services; The similarity or dissimilarity of channels; and sophisticated purchasing; and the number and nature of similar marks in use on similar goods. As you are facing a DMCA notice, you need to consult with a trademark attorney to evaluate your particular case and advise you accordingly. Good LuckSee question
i am having a onlinegame ap developed wanted to know if i can protect it
Yes, you can. There are potentially several ways you could protect an app. First, your app can qualify for a utility patent. Recent decisions by the Federal Circuit Court of Appeal have made software and business method patents easier to obtain. A utility patent would be the most valuable form of protection. You can get that protection if your app is new and has meaningful differences with what came before it. However, you should have filed for a patent BEFORE making the app publicly available. If the app release date is less than a year ago, you may still be able to salvage your rights here in the U.S., but almost all your international rights are lost. IF your app has been released over a year ago, then you can NOT get patent protection for it.
Next, your software is automatically protected by copyright. Unlike patent rights, which are earned by registration, and otherwise do not exist, copyright is vested in the owner the moment the work is created and stored in a medium from which the work can be retrieved. However, registration gives the copyright owner much more robust and complete rights, including seeking statutory damages of up to $150K plus attorneys fees in an infringement litigation. Ideally, you would want to register your copyright within 3 months of making it available to the public.
Finally, you can seek trademark protection for the name and logo you use to identify and promote your app. As with copyright, trademark protection is automatically created by use of the mark in commerce. However, again, registration gives the trademark owner more complete and robust rights, including the right to seek statutory damages of up to $2 Million plus attorneys fees in an infringement litigation.
Your best bet is to consult with an Intellectual Property attorney who can evaluate and analyze your options and advise you accordingly. Good Luck
Hi, I have this situation: I'm planning to import and sell a product produced in China. I've just noticed that a company posted on its website the same product mentioning in the description that it is "Patent pending". (posted in 2014) I cannot...
NO, it is not a good idea to do so without receiving legal advice from a patent attorney. Patent applications typically take three years from filing to conclusion. So, the fact that the patent filed in 2014 may still be pending is not a surprise. In addition, that patent should have been published by now. you can search the USPTO website for Patent Publication Applications under the company’s name and see if you find anything. In any event, even if you did sell the product now, the company would not be able to sue until they get their patent issued and they have to mark their product with the patent (which now they can do on their website as well as on the product itself) or else provide you with notice (either by letter or filing suit) to collect any damages. If they want to get the damages for sales earlier than the date when patent is issued and notice given, then they have to send you a specific notice identifying the patent publication and the allegedly infringing product and then wait for the patent to issue. IF the issued patent and the patent publications have substantially the same claims, then they can try to get damages as of the date of the publication (which, as I stated, should have already occurred). As I stated before, your best bet is to consult with a patent attorney. Good LuckSee question
I have a consulting process and we use a unique process. Consider it our secret sauce. How can we patent this process?
Yes, you can. In fact, recent decisions by the Federal Circuit Court of Appeal, which has jurisdiction over all patent appeals, have made it easier to obtain patent protection for business method inventions by setting standards which must be met for obtaining patent protection for business method inventions. As long as the claims are written in a way, which are focused on the invention and not trying to cover the entire subject matter of the invention, you should be ok. As with all patents, business method patent inventions need to meet the tests of novelty (meaning they are new and not done before); and non-obviousness (meaning there are meaningful differences between the invention and what came before it). Your patent attorney would be in a better position to evaluate your particular case and advise you accordingly. Good LuckSee question
How do I PROVE OWNERSHIP OTHERWISE?
in order to license something, you have to have a legally recognized property right. A patent is issued by the government and is therefore a legal property right. A trade secret (provided you follow its rules) is also a recognized form of intellectual property. Without a property right recognized by the government, you have to persuade a private party to license your invention. But that is not very likely, since any license would most likely not pay a royalty for an unprotected invention. Your best bet would be to consult with an Intellectual Property attorney who can evaluate your options and advise you accordingly, gOOD lUCKSee question
PLAIN ENGLISH. THANK YOU.
You “own” an invention by obtaining patent protection for it or by protecting it as a trade secret. Patent rights are not obtained by merely making an invention, but by getting a patent for it. The patent will provide its owner with a period (20 years from the filing date) of exclusivity for the invention(s). If your invention is a formula or process you may also be able to protect it as a trade secret. The Coca Cola company has successfully protected its formula as a trade secret for over a 100 years. However, in the case of a trade secret, IF someone else makes your invention independently and gets a patent for it, then they get exclusive rights, while you can still practice your invention but you would not have exclusivity. Your best bet is to consult with an Intellectual Property attorney who can evaluate and advise you of your options. Good LuckSee question
I am looking into filing a provisional, and eventually, non provisional patent for a new iteration of a skateboard. What us the average cost for both provisional and non provisional?
First, remember, that filing a U.S. patent application is only the first step in the process of protecting your invention. The next step is “prosecution” of the patent application through the PTO, meaning the give and take, back and forth between the patent office examiner assigned to your case and your attorney (or with you, if you are not represented by an attorney) to try to get all or part of your invention allowed as a patent. That process (on average) takes 8-10 months and will cost more. Regarding the FILING costs, the costs of filing a provisional patent application run from $1,000 to $3,000. The charges for a regular (non-provisional) patent application run from $6,500 to $8K. You also have a choice to request “expedited processing” of your patent application which must be done at the time you file your regular (non-provisional) application. The PTO charges a $2K fee for expedited processing, which will get your patent issued (i.e., if the PTO examiner finds your invention to be patentable) within a year from the date of the regular patent filing. With normal (non-expedited) processing, you are looking at about 2 years before the PTO gets to examining your application and another year or so for examination. There are going to be additional costs if you desire to protect your invention abroad. International filings are separate and must be done within a year of your original filing (whether regular or provisional). Or, you can “buy” an additional 18 months (on top of the one year you get automatically to file international application(s)) to choose the foreign countries in which you want to get patent protection. Your best bet is to consult with a patent attorney to discuss your choices and the best option for you. Good LuckSee question
Over a year ago my partners and I had filed a provisional patent. During that time one of the partners decided to pursue some companies to manufacture or invest. None of them contacted us but did view the product via email several times. Now the p...
The first thing you need to do is to get in touch with a patent attorney to determine exactly what you have done, what you have got at this point and what you can do going forward.
There are many ambiguities in your questions, which makes it difficult to provide an answer on point. First, a provisional patent application is only good for one year. During that year, the application owner needs to decide whether to file a regular patent application or let the provisional application go abandoned. If you did indeed file only a provisional application and did not convert it to a regular application during the year, then the patent application has already expired. Next, you say you sent your invention to others during the one year period. I assume you did not sign a non-confidentiality agreement with these companies which your partner showed the invention to. If so, then there is not much you can do. Many companies do not receive inventions unless the provider signs a confidentiality/waiver agreement first. You need to follow up on what, if anything was signed. Next, re receiving a letter from the patent office, that is an indication that you patent may have been published, which would indicate that you did convert the provisional application to a regular one. Publication of patent applications takes place only if a regular patent has been filed and typically occurs 18 months after the first filing. To file a lawsuit for infringement, you need to wait until the patent issues. Damages would be calculated from the date of the lawsuit (or if you mark your product with the patent, from the date of introduction of the marked product to the market). However, If your patent application has indeed been published, then you can send a letter to the infringers and warning them that specifically identifies the accused product and your patent publication and explains how the product infringes your (to be issued) patent. That will start the damages clock running as of the date of the notice as opposed to waiting to get the patent issued and then either sending the letter or filing a lawsuit. Good luck.See question
I own the US Paten on an abdominal exerciser and had a contract with a company called Edison Nation, they paid me less than 2K over the last 7years and told me it has always been a hit and better in the UK. I ask why am I not getting any money and...
It sounds like you did not have an attorney represent you in the licensing negotiations regarding your patent. If that is correct, then you made a mistake. If that is not correct, then you should first run your questions by that attorney.
The royalty payments you are receiving are based on the contact you have with Edison and AVON. A business/Intellectual property attorney should review the contracts to determine if the payments you are receiving are in accordance with the contracts. Regarding the expiration of you patent, a patent is valid for a period of 20 years from its first priority date (if you started with a provisional application then the term is 21 years.) If your patent is expiring because it is getting near the end of its term (and not because of maintenance fees) then you can’t extend it any longer. However, you CAN file a new patent based of the one change you have made to the invention IF the change is significant enough. You need to confer with a patent attorney on that one. Good luck.See question