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Patents and Trademarks

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  • If you are curious to read up on more details, there’s quite a bit on the PTO website, including directories of patent agents and attorneys and guidelines to help you write your own patent if you want.
  • Based on this single sentence, we have Title 17 of the US Code (copyrights) and Title 35 of the US Code (patents). Trademarks have Title 15, often called the Lanham act From the laws themselves we get the regulations concerning how the department responsible for executing the laws interprets them, and from there we get the PTO’s own instructions, further interpreting the regulations given to them by the Commerce department, called the MPEP, containing form paragraphs and rules for handling a patent application.
  • Right to exclude – not the right to make, use, or sell it yourself. Must still find a way to afford to produce your invention and comply with any applicable laws The invention – to exclude someone from doing those things, the burden is on you to show that they have in fact infringed your claims.
  • Useful: anything having some function beyond pure ornamentation. The use can be ‘entertainment value’ Novel: Not previously disclosed Non-obvious: not a mere combination of existing ideas as obvious to “one of ordinary skill in the art” – essentially someone with a bachelor’s degree or experience in the field. Statutory bars: on sale, in use, or described in print pretty much anywhere in the world (any WIPO treaty country)
  • In re Bilski ( 545 F.3d 943 ) established the machine or transformation test for method patents; a method must either be tied to a specific piece of hardware (e.g., a computer) or transform an article to a different state or thing. Our current read of this is that the easiest way to meet this in software is to “output something to a display device” This test, by the way, has been endorsed by the gov’t, in a brief just filed by the Obama administration (as of 9/28/09)
  • Claims are the heart of the patent. You can write anything you want in the specification, but if it’s not in the claims, it’s not covered by the patent. The terms of the patent (e.g., avatar) are defined by the specification. When this trial goes forward, the court will hold a hearing to interpret the claims; the case is more or less won or lost here. If you get a favorable interpretation, you’ve got a better shot at proving infringement. On the other hand, the ruling might completely exclude the product you’re suing over. That’s one reason patent litigation is more expensive than a lot of other lawsuits – there’s a lot more up front work before the trial even starts. To show infringement, you have to show the product does everything in the claim. There must be “other users”, and each must have an avatar run by a client process; the client must receive positions from some, but not all of the other users, and determine which ones to display.
  • Google has received a design patent on their main home page…as it looked in 2004. This is a downside to patents, it’s not exactly fast. Rather than word claims used in utility patents, the drawings are the claims for design patents. In this case, the dashed lines are not claimed, so this arrangement of elements with a different logo would still be covered by the design patent. Unlike utility patents, infringement doesn’t require exact duplication – the test is whether an “ordinary observer”, meaning the judge, would confuse the two designs.
  • Maybe you need to show an investor that you have something worthwhile and new, maybe you want to discourage someone from asserting patents against you or prevent them from getting a patent. For example, even if you never actually get a patent issued on the application, putting the idea on record with the patent office helps ensure that noone else can get a patent on it. The patent office tends to focus their prior art search on existing patents and applications, so having it on file helps bring it to the top of the search pile. Maybe you don’t want to assert it, you want everyone using your idea freely. It could happen. There are a number of collaborative organizations dedicated to maintaining patent inventories dedicated to the public. For example, Patents owned by Open Invention Network SM are available royalty-free to any company, institution or individual that agrees not to assert its own patents against the Linux System. Admittedly, sometimes the defensive strategy won’t help, especially when dealing with “non-practicing entities”, AKA patent trolls. They’re not producing anything for you to assert your own patents against…unless their patents cover the same sort of product. Say you were being sued over the worlds.com avatar patent, but you had a patent on your own method of avatar interaction. If it predated theirs, you could use that as a basis for invalidating their patent. If yours came later, hopefully that patent came up during your application process and was considered by the Examiner. In that case, and assuming your patent claims accurately reflect what your product is actually doing, you have a presumption that your method is patentably distinct from theirs. In any case, it’s important to at least remember the basics here – if someone puts you on notice that you might be infringing, you can and should get a written opinion from an outside attorney that either their patent is invalid or that your product is non-infringing. That can save you damages for “willful” infringement down the line, even if the opinion is later found to be in error.
  • Fee reduction for small entities – independent inventors, non-profits, and other small companies. Qualifications are based on annual gross income for the business, right now ~$25M. But, if you cease to be a small entity while the application is pending, you have to go back and pay the difference.
  • Everyone’s familiar with trademarks – when you hear “brand strength”, it really means “trademark strength”.
  • For what it’s worth, Harley Davidson did try and get a trademark on the sound of their engines; they failed, not because sounds can’t be trademarks, but because they don’t actually make their engines – they buy them from a supplier, and so they aren’t the “source” of the goods
  • Factors in Likelihood of Confusion Analysis Similarity between trademarks in appearance, sound, and/or meaning Similarity between goods and services Marketing environment (channels of trade) Strength of senior trademark Likelihood of trademark expanding into product category of junior trademark Intent of junior trademark user’s adoption’ Buyer sophistication
  • Fanciful: The fanciful mark has no definition, and was invented to serve as a mark. “Exxon”, “Kodak”, and “Google” Arbitrary: ordinary words that have meanings, but the meanings have no relationship to the product. “Apple Computer”, “Dove Ice Cream” Suggestive: Suggestive marks hint at some desirable quality or character related to the goods. “Ivory Soap”, “Pampers Diapers” Descriptive: describe the goods or a quality, characteristic or purpose of the goods. No protection without showing that people associate the mark with your product. “Jiffy Lube” This includes simple geographic words, a la “Atlanta Diner”
  • This is another reason it’s important to monitor your marks. If someone uses your trademark as a verb, you’re probably in trouble. E.g., “Google it” rather than “look it up using the Google® search engine”
  • Turn it to your advantage. Another ad campaign saved the Xerox mark using a slogan that they trademarked in turn – “You can’t Xerox a Xerox on a Xerox.” Effort counts here – chances are you’re not going to get people to change the way they speak, but by showing that you’re working to maintain the integrity of your mark, you avoid the danger of waiving the right to defend it.
  • Unfortunately, you’re not likely to win a trademark suit here unless they’re using it to redirect people to a competing business rather than a “legitimate protest site”.
  • If it’s a domain name, registrars will not transfer a domain without a binding court decision or agreement. ICANN has adopted a uniform domain-name dispute-resolution policy that all of the registrars are expected to follow. Essentially, they tell you to sort it out and let them know if it works.
  • Apple Computer and Apple Records
  • Marvel claimed the Statesman character infringed its Captain America trademark, among others; the case eventually settled for an unknown amount What to do about this? Create terms of use making attempts to infringe others’ trademarks a violation, have some method where TM owners can report alleged violations, and have a policy of investigating those reports. It may not keep you from being sued, but if the ones complaining didn’t follow the process, you’ve got a good defense.
  • Limited rights in geographic region of use. Typical remedy results in getting other party to stop use of the mark. Allows coexistence of same mark for same goods in different regions of the country. Some of you are probably familiar with Einstein Bros. Bagels…
  • CL TM only covers the geographic area you’re using it in. Presumably most of you will not be limiting your products to a particular geographic area; federal registration makes much more sense for you that it would for a purely local restaurant or shop. Registration provides an inference that the infringement was “willful and intentional”, which is a wonderful legal term that means attorney’s fees might be paid by the other side on top of maximizing any damage award and our clients will be very happy indeed. If you plan to go international, having an active US registration satisfies a lot of the formalities for many foreign TM registrations, showing that the mark is valid and in use Again, before you select that great name for your game, your software, your company, whatever, do a quick search on the PTO site to see if someone else is using it. Others are doing that, and will see your registration and potentially head off a later conflict.
  • The ® can only be used after the registration is approved by the PTO, and must only be used in relation to those goods or services which are specified in the certificate of registration Continuous use - There’s a presumption of abandonment if it’s not used for three years
  • Transcript

    • 1. SimLawyers: Patents and Trademarks Blake Sorensen
    • 2. USPTO
      • Federal Agency under the Commerce Department
      • Receives and Examines Applications for Patents and Trademarks
      • Exclusive for Patents, Concurrent with States for TM
    • 3. Authority
      • U.S. Constitution, Article I, Clause 8
      • “ to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
    • 4. Patent Rights
      • Right to exclude others…
      • From making, using, selling, offering to sell, importing…
      • The patented invention…
      • In the United States…
      • During Patent Term
    • 5. Requirements
      • Useful
      • Novel
      • Non-obvious
      • No bar to application
    • 6. Types of Patents
      • Utility Patents
        • Process
        • Machine
        • Article of Manufacture
        • Composition of Matter
        • Any Improvement
    • 7. Software Patents
      • Fall Under the “Business Method” aspect of Process Patents
        • “One-Click” is a business method patent
      • Law is in Flux – New test being examined by Supreme Court
    • 8. Software Patents
      • Worlds.com vs.. NC Soft
      • Asserts Two Patents
        • 6,219,045: World Chat System
        • 7,181,690: User Interaction in a Virtual Space
    • 9. Sample Claim (7,181,690)
      • A method for enabling a first user to interact with other users in a virtual space, wherein the first user and the other users each have an avatar and a client process associated therewith, and wherein each client process is in communication with a server process, wherein the method comprises:
      • (a) receiving a position of less than all of the other users' avatars from the server process; and
      • (b) determining, from the received positions, a set of the other users' avatars that are to be displayed to the first user,
      • wherein steps (a) and (b) are performed by the client process associated with the first user.
    • 10. Types of Patents, cont.
      • Design Patent
        • Ornamental design for article of manufacture
        • Cannot apply to functional elements
      • Plant Patent
        • Asexually reproduced plants
        • Seeds and tubers excluded
    • 11.  
    • 12. Do I Want a Patent?
      • Advantages
        • Right to Exclude Others from a critical part of the business / Head start
        • Possibility of licensing a valuable technology
        • Defensive Strategy (Mutual Destruction)
    • 13. Do I Want a Patent?
      • Disadvantages
        • Cost
          • Cost of Getting a Patent
            • Filing Fees (~ $1100)
            • Issue and Maintenance Fees ($9080 over ~ 12 years)
            • Attorneys’ Fees ($5000-$10000+)
          • Cost of Enforcing a Patent
            • Litigation is Expensive
        • Time
    • 14. Trademarks
      • A trademark is any name, design, slogan, sound, etc. that identifies a source for a product or service.
        • Business Reality = Legal Monopoly to use a particular mark for a particular product or service!
    • 15. Types of Trademarks
      • Names (Apple® Computer)
      • Slogans (“The Ultimate Driving Machine”®)
      • Domain Name (amazon.com®) – if it designates the source as well as providing the location
    • 16. Trademark Infringement
      • Likelihood of consumer confusion
      • Factors
          • similarities in sound, appearance, meaning
          • relationship between goods/services
    • 17. Protect Yourself
    • 18. Genericide
      • A term that is not initially generic may become generic if consumers come to believe that the mark is actually the name of the product.
      • What can you do?
    • 19.  
    • 20. Yourcompanysucks.com
      • When is a trademark infringed?
      • When it causes confusion to the consumer.
      • Important to monitor for unauthorized uses of your trademark; otherwise you risk waiving your rights
    • 21. What Can You Do?
      • Monitor for use of your mark
      • Send the infamous “cease & desist” letter.
      • File Oppositions if someone tries to register a similar mark
      • Sue
    • 22. Avoiding Others’ Marks
      • Search the PTO Database
      • Search the Web
      • Competitor Research
        • Unless the mark is “famous”, identical marks can be used to describe different products.
    • 23. But I Didn’t Do It!
      • You can still get in trouble even if you don’t infringe a mark directly.
        • Linden Labs is being sued…again…for people creating and selling trademarked “goods” in Second Life
        • NCSoft had to defend against accusations by Marvel
    • 24. Federal and State Trademarks
      • Unlike Patents and Copyrights, Trademarks are not covered by the Constitution
      • You can claim “common law” trademark in a state as soon as you start selling something.
    • 25. So Why Register?
      • Establish priority throughout the U.S.
      • Recovery of infringer’s profits, with possibility of treble damages
      • Basis for Foreign Registration
      • Deter others from adopting similar marks
    • 26. Proper Trademark Usage
      • Combine the trademark with the generic name of the product; for example, KLEENEX® facial tissue.
      • Use ® at least with the first most prominent appearance.
      • Use continuously and consistently
    • 27. Improper Trademark Usage
      • Do not use the trademark:
          • In the possessive form.
          • As a descriptive adjective for the goods.
          • As a verb.
          • As a noun.
      • Avoid variations in spelling and display of a trademark.
    • 28.
      • Thank you
      • Blake Sorensen
      • 191 Peachtree St., Suite 4300
      • Atlanta, GA 30303
      • (404)-954-5047
      • [email_address]

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