Trademark

Summary
  1. Legislation:
    Protection of trademarks in the United States of America is governed by Lanham Act (Title 15 United States Code 1051-1127)
  2. Definition:
    A trademark is a word, phrase, symbol or design or a combination of which identifies and distinguishes the property of goods and items of one party from another. Service mark is this sense is the service which distinguishes one party from another is also governed under ‘Trademark Law’
  3. Criteria :
    A trademark can take any form as long as it is capable of identifying and distinguishing specific goods or services. They can include:

      1. Letters and Words
      2. Logos
      3. Pictures
      4. A combination of words and a logo
      5. Colors
      6. Slogans
      7. Sound
      8. Product Shape

    As a trademark needs to be distinctive, the courts have grouped marks into 4 categories based on the relationship between the mark and the respective good. Which are:

      1. Arbitrary:
        A mark that bears no relationship to the product in which it produces. It comprises of a common word or term which does not relate to the product promoted. These marks are held to be inherently distinctive and are usually given a high degree of protection.
        Ie: Apple – Phone and Computers, Ivory – Soap
      2. Fanciful:
        A mark which is invented (word or phrase) that previously could not be found in a dictionary. They are held to be inherently distinctive and are given a high degree of protection.
        Ie: Facebook – Social Media Network, Nike – Shoes
      3. Suggestive:
        A mark which indicates or suggest the characteristic of a particular good. It does not specifically describe the good. Unlike arbitrary or fanciful, the word or phrase used is not completely unrelated to its product. It appeals to the imagination of the consumer to identify its characteristics
        Ie: Blu-ray – high definition, high capacity data storage, Copperstone – suntan lotion
      4. Descriptive:
        A mark which clearly describes a part or the product instead of describing the characteristic or quality of the product. These marks are not held to be distinctive and would not be protected unless it can be justified that the mark refers to a particular producer and not its product
        Ie: Holiday Inn – hotel and service
      5. Generic:
        A mark which describes the general category in which the product. A generic term is not protected under trademark law as they are too simple and does not allow for distinguishing of goods or services from one party to another. Therefore it is not protected under the trademark law.

    Restrictions to trademark applications
    The following is not regarded as reasonable marks to apply for a trademark or service mark

    1. Comprise of immoral, deceptive or scandalous matter, or matter which may wrongfully represent a connection with persons (living or dead, institutions, beliefs or national symbols).
    2. Consist or comprise of the flag, coat of arms or other insignia of the United States, or any foreign nation.
    3. Consist or comprise a name, portrait or signature of an living individual except by his written consent.
    4. Consist of a signature or portrait of a deceased President of the United States during the life of their widow, unless by the written consent of the widow.
    5. Consist or comprise of a mark which is similar to that of a mark already registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States which has not been abandoned.
    6. Consist of a mark with a deceptive description of the product
    7. Consist of a mark where primary geographical location of the product is deceptively misdescriptive of them
    8. Where the mark is primarily a surname.
  4. Membership :
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid ProtocolThe United States of America is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months

    The United States is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.

  5. Rule of Priority :
    The United States practices a ‘right-to-first-user’, where the first user of the mark is considered to be given the right to priority. One exception to this rule lies in where the U.S. allows a prospective user to file an application on an intent-to-use basis. Here the priority date is to the date of filing and not to the date of first use.
  6. Duration and Renewal :
    A trademark once granted last up to 10 years. However, the mark has to be renewed on the fifth(5th) or the sixth(6th) Anniversary of the registration with a fee if the mark has been continually used in commerce in the past 5 years. If the mark has not be consistently used, the mark is to be renewed with a fee between the ninth(9th) and tenth(10th) anniversary of the mark. Subsequently, the mark can be renewed every 10 years with a renewal fee
Procedure/Timeline
  1. Application:
    All applications are to be submitted to the United States Patent and Trademark Office, either in paper or electronically. Once all relevant documents have been submitted, a filing date will be provided to the applicant
  2. Examination:
    During examination, the examiner assigned will consider if the mark abides by the statutory legislation. Not only that, the application is also considered for likelihood of confusion on based on the same certification marks. Should the application be rejected, one or more Office Action detailing the reasons for rejection will be provided to the applicant.
    To continue prosecution of the mark, should the mark be initially rejected, the applicant is to respond to all objections raise by the examiner. Should the examiner deem the response invalid, a final refusal will be issued. The applicant may still appeal this decision to The Trademark Trial and Appeal Board with an additional fee
    If the application is ‘Approved’, the application will be moved to publication.
  3. Publication:
    Once the application has been approved, the mark will be published on the “Official Gazette”
  4. Opposition:
    After the mark has been published, any party who believes that the mark damages or infringes their rights, they are allowed to file an opposition to registration. Alternatively, they can file a request to extend the time to oppose
    If the mark has survived the opposition period, a Notice of Allowance (Based on Intent to Use Mark) or a Registration Certificate (Based on Use) is issued to the applicant.
  5. Statement of Use:
    After the Notice of Application is issued abour eight(8) weeks after the mark was published. The applicant then has six (6) months from the date the notice of allowance was issued to submit a Statement of Use. Alternatively, he can request for a six (6) month extension to file the Statement
  6. Registration:
    On completion of opposition, application for based-on-use is granted a Registration Certificate to signify its registration.
    The application on intent-to-use, after the submission of the Statement of Use will be issued a certificate of registration.
Requirements

The following information/documents are required to file an application for a trademark in the United States:

  1. A verified statement signed by a person properly authorized to sign on behalf of the applicant
  2. A written application that includes
      1. Date of which the application was signed
      2. the applicants name and DBA designation (If appropriate)
      3. Applicant’s legal entity
      4. Country of citizenship, or the state or country of incorporation or organization of the applicant
      5. The names and citizenship of the general partners or active members of the joint venture (If a the applicant is a domestic partnership or a domestic joint venture)
      6. The applicants name and address for correspondence
      7. A clear drawing of the mark
      8. A statement indicating that the applicant is using the mark in commerce
      9. Identification of goods and services
      10. Classes which the goods and services (if known to the applicant)
      11. Date of which when the mark was first used and first used in commerce in each class
      12. Basis for filing
  3. Information of a designated domestic representative (a designated domestic representative is encouraged if the applicant is not based in the United States)
  4. The filing fee for each class of goods and services
  5. A true copy, photocopy, certification and a certified copy of the
  6. registration from the applicant country of origin
  7. One specimen for each class submitted
  8. Statement of Use
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legialation:
    Protection of ultility patents in the United States of America is governed under Title 35 of the United States Code. The rules in relation to the utility patent application are governed under Title 37 Code of Federal Regulations.
  2. Definition:
    A patent for an invention is granted to ensure the property right to the inventor. The rights granted are not the right to make, use, offer for sale, sell or import but is that to exclude external parties from making, using, offering for sale, selling or importing of the invention.
  3. Criteria:
    In order to obtain a patent for an invention, it must have the following requirements:

      1. Patentable subject matter (Statutory)
      2. Novelty
      3. Utility
      4. Non-obviousness

    Non-Patentable Subject Matter
    The courts have interpreted the statue to define the limits of which subjects matter can be patented. The following have be held to be non-patentable:

      1. Laws of nature
      2. Physical phenomena
      3. Abstract ideas
      4. Mere idea or suggestion
  4. Provisional Patent Application:
    Under the United States patent law, it allows for an inventor to apply for a provisional patent which serves as a simple and inexpensive way to start protecting the rights of their invention. The application of the provisional patent will provide a priority filing date. However, the application will not proceed unless a non-provisional patent application is filed. Should the inventor not do so within twelve (12) months, the application is deemed abandoned.A provisional application only includes a specification and does not require any form of legal patent claims. As a provisional application is not proceeded to examination, the application fee is significantly less compared to that of a non-provisional utility patent application
  5. Membership:
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)The United States of America is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, the United States is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  6. Rule of Priority:
    In order to retain the right of priority, the grace period in which the applicant is granted is that of one (1) Year before the actual U.S. filing date or the filing date of the earliest application. Within this one year, the applicant is not allowed to disclose the details of the article to any other party directly or indirectly.As per the America Invents Act 2011 (AIA), the United States currently practices “first-inventor-to-file” for patent application file after March 16, 2013. This recognizes the first applicant to file the Article to be given the right of priority.
  7. Duration and Renewal:
    A utility patent from the United States is granted 20 years from the date in which the application is filed.However, a maintenance fee is imposed during the life of a patent where payment is expected without surcharge at 3-3.5 years, 7-7.5 years and 11-11.5 years after the date of issue. Maintenance fee can still be paid during the ‘grace periods’ at 3.5-4 years, 7.5-8 years and 11.5 – 12 years but with a surcharge. The fee cannot be paid at an earlier date. If the Maintenance fee is not paid, the patent is no longer enforceable.
Procedure/Timeline
  1. Application:
    All applications are to be filed to the United States Patent and Trademark Office either in paper or electronics with all relevant documents together with the filing fee. Once all necessary documents are filed, a ‘Filing Receipt’ is issued to the applicant containing an application number and filing date. The applicant will then be assigned to a examiner where the application is examined based on the filing date.
  2. Examination:
    The examiner considers whether the article has fulfilled the statutory requirements (Patentability, Novelty and Non-obviousness) as well as the validity of all relevant documents including the comparison of the subject matter to ‘prior art’(Prior art are issued patents or published materials) which has been submitted before granting the applicant the patent.Should the examiner determine that the subject matter is satisfactory of the requirements, the application will be ‘allowed’ and instructions to complete the issuance of the permit will be provided.

    In the case where the examiner determines that the article is unsatisfactory of the requirements; An Official Action listing the basis of the rejection in detail is provided for the applicant. It is encouraged that the applicant keeps the Office action for their files and not return it to the Office

  3. Office Action:
    Should the applicant decide to continue prosecution of the application after receiving an Office action, a timely response to the Office action should be observed or the application will be held abandoned (Most replies must be received within six(6) months from mailing date on the Office action. However a shortened is generally observed with a period of wither two(2) or three(3) months.)The response to the Office action should either include a request for reconsideration or further examination of the claim, together with any amendments made by the applicant. The response must specifically point out supposed errors in the Office action and must address every objection and rejection listed in the action.

    Upon the submission of a response, the examiner will further examine the application together with the remarks and amendments submitted in in the response. The examiner would then withdraw the rejection and allow for the application. Should the response was still deemed unsatisfactory by the examiner, the rejection will be enforced and it will be made Final.

    The applicant can further appeal the Board of Patent Appeals and Interferences should they want to continue prosecuting the claim. Applicants may also file a new application as a result to the abandonment of the original application, claiming benefit to the earlier filing date.

  4. Publication:
    Pending utility patent applications are not to be published. Applicants may request that the application not be published, only if the application will not be published in a foreign country. Following publication, the patent is no longer held by the Office and members of the public can request for the entire file of the application.The publication allows the applicant to assert provisional rights which allows for the patentee to claim a royalty from a third party who infringes the published application provided proper notice is given to the 3rd party applicant.
  5. Issue of Patent:
    Once the application has been ‘allowed’, a Notice of Allowance and Fee(s) Due will be issued to the applicant. The fee is to be paid within 3 months from the date of notice, failure to do so would result the application to be deemed abandoned.
Filing Requirements
  1. Provisional
    The following information/documents together with the filing fee are required to submit a provisional utility patent application to obtain a filing date:

      1. The application as a provisional application for patent
      2. The name(s) of all inventors
      3. Inventor residence(s)
      4. Title of the invention
      5. Name and registration number of attorney or agent and docket number(if applicable)
      6. Correspondence address
      7. Any US Government agency that has a property interest in the application
  2. Non-Provisional
    The following information/documents together with the filing fee are required to be submitted for a non-provisional utility patent application:

      1. Utility Patent Application Transmittal Form
      2. Appropriate fees
      3. Application Data Sheet
      4. Specification
      5. Claim(s)
      6. Drawings (when necessary)
      7. An Oath or Declaration
      8. Power of Attorney
      9. Prescribed filing (when necessary)
      10. Large Tables or Computer Listing (when necessary)

    Note: All application must be submitted in the English Language. Should the application not be in English, it should be accompanied by a translation to the English Language. Both the original and translated document(s) are to be submitted.

  3. PCT National Phase Application
    The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

      1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
      2. Payment of national fee
      3. Furnishing of a translation if the international application was filed in any other language other than English
      4. A copy of international application, except where not required by that Office (if necessary)
      5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
      6. An oath or declaration of the inventor
      7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design


Summary
  1. Legislation
    Protection of design patents in the United States of America is governed under Title 35 of the United States Code. The rules in relation to the drawings of the design patents application are governed under Title 37 Code of Federal Regulations.
  2. Definition
    A design consists of the visual characteristics to an article. The subject matter of the design to be patented may relate to the configuration, shape, surface ornamentation, combination of configuration and surface ornamentation applied to an article. Design patents only protects the visual appearance of the article not it’s function or mechanism.
  3. Criteria
    An article has to fulfill the following conditions in order to apply for design patent protection:

      1. Patentable subject matter;
      2. Novelty;
      3. c) Non-obviousness;

    Improper Subject Matter for Design Patents
    The following are considered to be improper subject matter in the application of design patents (35 U.S.C 171):

      1. An article that is dictated primarily by the function of the article and lacks decorative appeal;
      2. There is no unique or distinctive shape or appearance to the article;
      3. The design must be ‘original’ in nature and not be simple or common in its design;
      4. The design lacks decorative appeal;
      5. Subject matter that could be offensive to any race, religion, sex, ethnic group or nationality.
  4. Membership:
    √ Hague Agreement Concerning the International Deposit of Industrial Designs
    √ Paris Convention for the Protection of Industrial Property
    The United States is part of Hague Agreement Concerning the International Deposit of Industrial Designs a treaty administered by the World Intellectual Property Organization. This allows for an international registration of Industrial design to exist. Which in this case allows for the applicant to file a single international deposit with WIPO or the national office of a country party to the treaty and it will be protected in as many member countries of the treaty.
    Besides that, the United States of America is also party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    In order to retain the right of priority, the grace period in which the applicant is granted is that of one (1) Year before the actual U.S. filing date or the filing date of the earliest application. Within this one year, the applicant is not allowed to disclose the details of the article to any other party directly or indirectly.
    As per the America Invents Act 2011 (AIA), the United States currently practices “first-inventor-to-file” for patent application file after March 16, 2013. This recognizes the first applicant to file the Article to be given the right of priority.
  6. Duration and Renewal
    Design patents which were filed after May 13, 2015 have a term of 15 years from the date of the grant. While designs patents filed prior to May 13, 2015 have a term of 14 years from the date of the grant.
    There is no maintenance fee or annuities in regards to that of maintaining an industrial design patent.
Procedure/Timeline
  1. Application:
    All applications are to be filed to the United States Patent and Trademark Office either in paper or electronics with all relevant documents together with the filing fee. Once all necessary documents are filed, a ‘Filing Receipt’ is issued to the applicant containing an application number and filing date. The applicant will then be assigned to a examiner where the application is examined based on the filing date.
  2. Examination
    The examiner considers whether the article has fulfilled the statutory requirements (Patentability, Novelty and Non-obviousness) as well as the validity of all relevant documents including the comparison of the subject matter to ‘prior art’(Prior art are issued patents or published materials) which has been submitted before granting the applicant the patent.
    Should the examiner determine that the subject matter is satisfactory of the requirements, the application will be ‘allowed’ and instructions to complete the issuance of the permit will be provided.
    In the case where the examiner determines that the article is unsatisfactory of the requirements; An Official Action listing the basis of the rejection in detail is provided for the applicant. It is encouraged that the applicant keeps the Office action for their files and not return it to the Office.
  3. Office Action
    Should the applicant decide to continue prosecution of the application after receiving an Office action, a timely response to the Office action should be observed or the application will be held abandoned (Most replies must be received within six(6) months from mailing date on the Office action. However a shortened is generally observed with a period of wither two(2) or three(3) months.)
    The response to the Office action should either include a request for reconsideration or further examination of the claim, together with any amendments made by the applicant. The response must specifically point out supposed errors in the Office action and must address every objection and rejection listed in the action.
    Upon the submission of a response, the examiner will further examine the application together with the remarks and amendments submitted in in the response. The examiner would then withdraw the rejection and allow for the application. Should the response was still deemed unsatisfactory by the examiner, the rejection will be enforced and it will be made Final.
    The applicant can further appeal the Board of Patent Appeals and Interferences should they want to continue prosecuting the claim. Applicants may also file a new application as a result to the abandonment of the original application, claiming benefit to the earlier filing date.
  4. Publication
    Pending design patent applications are not to be published.
  5. Issue of Patent
    Once the application has been ‘allowed’, a Notice of Allowance and Fee(s) Due will be issued to the applicant. The fee is to be paid within 3 months from the date of notice, failure to do so would result the application to be deemed abandoned.
Requirements

The following information/documents are required before submitting an application for design patents

  1. Preamble, stating the name of the applicant, title of design, a brief description of the nature and intended use of the article in which the design embodies;
  2. Description of the figure(s) of the drawing;
  3. Feature description (optional);
  4. Application data sheet (optional);
  5. Single claim;
  6. Drawings or photographs;
  7. Executed oath or declaration.
Documents
Downloadable Forms
Agents
Fee