A trademark is any recognizable symbol, word, design, scent, sound, or combination thereof that is used to distinguish the goods or services of one business from those of others. A trademark is intended to protect consumers from accidentally buying the wrong watch.

Trade dress is a type of trademark that focuses on the visual aspects of a product, like a product's packaging, design, or overall appearance that distinguish it from other similar products in the marketplace. For example, you know when you walk into a Burger King instead of McDonald’s. Or when you have an iPhone instead of a Pixel in your hand.

It’s a trademark for services. For example, Rogue.law is a service mark.

A trademark office action may issue if the Examining Attorney believes your mark is likely to be confused with another, or if it’s not distinctive enough to function as a trademark. Oftentimes, we can overcome the refusal to register by simply arguing the point, because there is a lot of subjectivity to trademarks.

Trademarks are a use-it-or-lose-it kind of deal. So, after the USPTO has allowed your application, we will need to submit an SOU claiming you are using the mark on ALL goods/services listed in the application, and the date of first use.

The critical thing with the SOU is that we can’t file it until AFTER you have successfully sold the product/service carrying the mark, and under certain conditions, which we can explain during a consultation.

If there are no sales, we need to file an extension. Extensions can be filed for up to 3 years.

After allowance, we will need to submit a Statement of Use, along with a specimen proving you are using the mark in commerce. The specimen can be a photo of the goods or packaging carrying the mark, a website showing how you sell the goods/services online, and more.

The USPTO is very specific about what will be accepted as a specimen, but we can help guide you through this step.

After the USPTO has determined a trademark can be registered, they will publish the application for opposition. This gives members of the public 30 days to oppose registration if they believe they will somehow be harmed if your mark registers.

After an application is published for opposition, if a member of the public feels they will be harmed by registration of your mark, they may file an opposition. That is, they may oppose registration.

This is a legal proceeding and typically occurs if you have a competitor who believes your mark is too close for comfort even if the USPTO thinks it’s acceptable. (E.g. Monster Energy opposes the use of Beast across many categories of goods.)

Laura can represent you during the proceedings or during settlement negotiations. Most of these settle pretty quickly, usually with an agreement between the parties to behave in a way that ensures the public isn’t confused between the two.

You can’t register APPLE as a trademark for apples.

A generic mark is a generic word for the product or service you are claiming. Sometimes it’s a word that used to be a real trademark but, through common use, became generic.

“Escalator” used to be a trademark for moving stairs, for example.

A suggestive mark is a mark that suggests or implies a characteristic, quality, or feature of the goods or services it represents, without directly describing them. But it’s not descriptive. See our trademarks page for specific examples.

A descriptive mark directly describes a characteristic or function of the goods or services it represents. It requires no jump in the imagination for the consumer.

If, however, over time, the descriptive mark becomes synonymous with your product, then it’s possible to register. See our trademarks page for specific examples.

DOVE for soap is an arbitrary mark. These marks are typically existing words used in a context unrelated to the products or services, creating a unique and unexpected association.

A fanciful mark is a made-up word used to identify the goods or services. The USPTO loves fanciful marks, and they are easy to register.

But you have to be careful – make sure you have something that’s easy to remember/spell/etc.

The UDRP is a process a trademark owner can use to force counterfeit goods suppliers to transfer their domain to the proper trademark owner.

This is specifically directed to situations in which the domain is (nearly) identical to a trademark you own, the registrant has no legitimate rights or interest in the domain name (counterfeit goods, cybersquatters), and the domain name has been registered and is being used in bad faith.

Copyright is an exclusive right granted to the creators of original works to control the use and distribution of their artistic expressions. This covers literary works including text on web pages, artistic works including photos of your products on webpages, musical compositions, films, software code, and other creative endeavors.

For individuals: the author’s lifetime plus 70 years.

For anonymous works, works made-for-hire, or under a pseudonym: 95 years from publication, or 120 years from creation, whichever is shorter.

So don’t forget to mention your copyrights in your will.

Fair use is a legal doctrine in copyright law that allows limited use of copyrighted material without the permission of the copyright holder, for purposes such as criticism, commentary, news reporting, teaching, scholarship, research, and parody.

Parody is a form of commentary or criticism that imitates, mocks, or satirizes an original work in order to evoke humor or make a point. A parody might be a fair use of copyright-protected material, but not always. Talk to your lawyer about this!

A DMCA takedown is the process of demanding the removal of copyrighted material from an online platform or website under the provisions of the Digital Millennium Copyright Act (DMCA). The online service provider must promptly remove or disable access to the infringing material as soon as they receive a valid DMCA demand. This is a useful way to combat counterfeits.

The proper answer: A patent is a legal right to prevent others from using, making, or selling your invention without your permission.

In English: A patent is a monopoly that allows you to stop others from doing something.

And what is that “something”? It’s what is in the patent claim, and is what Rogue.law focuses on. The patent claim is the fence around your invention, and Laura will do her best to secure lots of real estate for you.

A type of patent that protects the functional features of an invention.

For example, a utility patent would be directed to the improved rubber used in the tires of your car, or the software that makes your computer work better without burning up.

A patent that protects the visual appearance (ornamental design) of something.

E.g. the shape of the Coke bottle.

Trick question!

Design patents and utility patents have different functions and are used in different ways. A design patent protects the visual appearance of an item, while a utility patent protects the functionality of the same item.

In some ways, a utility patent is considered broader, because it protects products the perform the same function in the same way, even if the products look very different.

BUT, design patents can be useful for products that may be copied overseas and shipped to the US. Why? Unlike with utility patents, we can register design patents with customs – and CBP will seize counterfeit products at the border.

It takes a long time to prosecute a patent. So, to put the public on notice, you can mark your products as “patent-pending” once we’ve submitted the patent application, and, in some cases, this can increase the amount awarded to you if somebody infringes your claim.

An office action is issued when a Patent Examiner finds any reason to reject the application. There are many reasons this can happen.

Sometimes, it’s a very small administrative matter that we can take care of quickly, but other times, the office action is a statement that the invention we are claiming isn’t new, or it’s obvious.

We have the opportunity to respond to the office action, either with arguments or amending the claims, to secure an allowance.

Contact Rogue.law as soon as possible after you receive an office action, because failing to respond will result in the application being abandoned, possibly with no way to revive it.

The claims of each patent must be directed to a single invention. If the claims are directed to multiple inventions, then we need to divide it into multiple applications, which is where the restriction requirement comes in. The Examiner may issue a Restriction Requirement demanding we pick just one invention to pursue in the pending application.

But don’t worry – we can file a continuing application, keeping the same priority, directed to the other invention(s).

Congratulations!

An ex parte Quayle Action is a notice from the Examiner stating he/she will allow the application once some minor formalities are taken care of.

For example, we may need to change the title of the patent if we amended the claims in a way that no longer really conform to the title.

A species election is similar to a restriction requirement, but not quite the same. Sometimes, a claim can be so broad that it’s nearly impossible for an Examiner to search the universe, so he/she may ask you to elect just one species to search. And when the patent issues, the broader list of embodiments may or may not be protected, depending on the specific circumstances. Call us if you need more information about this situation.

A Final Office Action is effectively a statement by the Examiner that we have not overcome the previous objections raised in a first Office Action.

But a Final Office Action is not final. If we only have minor issues remaining, we can still file another response to secure an allowance. And even if that’s not possible, we can file a Request for Continued Examination (RCE) to have the opportunity to file other amendments/arguments. Or we can file a continuation, which is a new application claiming priority to the pending application.

A notice of allowance is a statement by the office that the application will register once we pay an issue fee.

The priority date is the date of first filing in the patent family, and is the cut-off date for “prior art” that is considered. Publications by other parties made after the priority date will not be considered when determining if your invention meets the requirements for a patent.

Provisional applications are placeholders, a mechanism to secure an early priority date, and require a utility conversion within a year. Because provisional applications have certain inherent risks, Rogue.law will only file these in very limited cases.

The USPTO wants us to tell them about all the competing products or publications that might be used to reject the application. (I know.) It is many people’s instinct to not disclose what they might know, but there can be advantages to this.

If you disclose, say, a competitor’s product, and a patent still issues, then your patent will be stronger. Disclosure makes it an uphill battle for anyone who tries to invalidate your patent.

An oath or declaration is a statement by the inventor acknowledging he/she is an inventor and has reviewed the application. So make sure your inventors review the application.

An assignment is transfer of ownership rights of Intellectual Property to another. This can include transferring a patent, trademark, and/or copyright.

Design patents are valid for 15 years from the issue date.

Utility patents are valid for 20 years from the priority date (excluding the provisional filing date, if any).

Patents are national in nature. So a US patent is enforceable in the US only.

You may be entitled to damages. Laura does not litigate patents, but do contact us for referrals to patent litigators.

Not necessarily. There are many nuances and legal considerations to a patent claim, and it is possible to secure a patent while also infringing another.

As an example: if you invent a car with four wheels, you can patent it and prevent others from selling cars with four wheels. BUT, if somebody patented a car with three wheels before you, well, you are probably infringing that prior patent. Because in the patent world, three wheels means three or more wheels. Sometimes. But not always. Contact us for more details.

At Rogue.law, the cost to secure a patent can range anywhere from $2,500 to $30,000, depending on the complexity of your invention and how crowded the market is. Add another $7,000 per country if you wish to expand beyond the United States.

Note: Laura has a soft spot for start-ups and solo inventors. Hint. Hint.

An FTO is a legal analysis to determine if your product infringes the patent claims of another. This is a formal analysis that can’t be attempted over a 5-minute phone call.

Patentability analysis is a process to assess the novelty and non-obviousness of the invention. We may or may not do this before filing a patent application.

There is no such thing as an international patent.

But we can file a PCT application, which is a placeholder that will allow us to file applications in other countries of interest within a certain period of time.

The PCT application also returns search results quickly, so we know sooner than later if it’s worth investing in multiple countries.