© 2015 Kilpatrick Townsend June 18, 2015

An Introduction to Trademark & Patent Law

Presented by Lindsay Kaplan & Nicki Kennedy

Kilpatrick Townsend & Stockton LLP

Presented to

Intro to Trademark Law

Presented by Lindsay Kaplan

Trademark Roadmap

What is a trademark?

What makes a strong trademark?

How do you clear/search for a mark?

Filing Strategies and tips

Enforcing your marks

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Does this look familiar?

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What about this?

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Does this look familiar?

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And this?

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Identifying Trademarks

• a distinctive indicator of the source of goods or services

• symbols in the marketplace of your company’s goodwill and reputation

A trademark

IS:

• a domain name (the internet address associated with a website) or

• a trade name (the name of the company or organization)

A trademark IS NOT:

www.care.org Cooperative for Assistance and

Relief Everywhere, Inc.

• The domain name or trade name also functions as a source identifier Unless:

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Examples of Trademarks

Arbitrary

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What makes a strong mark? The Spectrum of Distinctiveness

Fanciful Suggestive Descriptive Generic

MORE DISTINCT

“I registered my business name with the state, so I have exclusive

rights in that name as a trademark.”

“I registered my business name with the state, and the state

approved it, so I can’t be infringing anyone else’s rights.”

“I bought the website __.com or ___.org, so I have rights in that

mark.”

“Only logos can be considered trademarks.”

“I own a trademark registration, so I own a monopoly on that

mark.”

They didn’t file a trademark registration, so they don’t have rights.

“I should pick a trademark that describes my product or service

so people know what we do.”

“I should always use the ® symbol to indicate that something is a

trademark.”

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Trademark Myths

None of these are true.

• Before filing an application or adopting a new mark,

search registered and common law marks. – Google search to find common law uses

– U.S. Patent and Trademark Office Records (www.uspto.gov)

– Saegis Search (also has international databases)

• http://tess2.uspto.gov/

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Trademark Clearance

• Before filing an application or adopting a new mark,

search registered and common law marks. – Google search to find common law uses

– U.S. Patent and Trademark Office Records

– Saegis Search

(also has international databases)

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Trademark Clearance

• Federal Registration conveys nationwide rights.

• Without a registration, rights are territorial and based

on use.

• The first to use a mark in a particular geographic area

develops “common law” rights in that area.

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Establishing Trademark Rights

Seattle

Miami

• Nationwide rights

• Presumption of validity and exclusive ownership

• Protect against registration of confusingly similar

mark through PTO practice

• Nationwide notice of ownership as of registration date

(prevents subsequent “good faith” adoption)

• Mark is easy for others to find in availability search

• Use U.S. registration as a basis for obtaining

registration in foreign countries

• Invoke federal jurisdiction

• Can use the ® symbol

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Why Register on the Principal Register?

• Federal trademark application filing fees range from

$225 to $375 per international class.

• Examining Attorney reviews application for any

deficiency and issues an “Office Action” if there are

substantive reasons for refusal.

• Once applicant has responded to all issues, the mark

is published for opposition and third parties can

oppose.

• If no oppositions – mark is registered (if use-based) or

– issued a Notice of Allowance (if intent-to-use).

Trademark Applications

Typically 12 to 20 Months to Registration

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Filing Tips

• TEAS Reg. v. TEAS Red. Fee

Applications (TEAS R v. TEAS RF)

– TEAS RF is cheaper ($275 v.

$325/class)

– TEAS RF requirements: • File electronically

• Authorize e-mail communications

• TEAS PLUS is less expensive, but gives

less flexibility in wording of goods/services

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Marking Trademarks

• Why?

Convey to Others that Term is a Mark and/or that it is Registered

• Enhance Cost for marking: almost zero – free

Warning regarding ownership

• How? Place appropriate marker after word, image, etc.

® indicates that a mark is federally registered

™ indicates that the owner is claiming trademark rights

SM indicates that the owner is claiming service mark rights

For clearance and

enforcement, we must

evaluate whether there is

a “likelihood of confusion”

between the marks at

issue. In other words,

whether consumers would

be likely to be confused as

to the source, origin or

sponsorship of the parties’

products through their use

of their marks

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Likelihood of Confusion

Likelihood of

Confusion?

Similar? Marks

Related Goods or Services?

Similar trade channels?

Careful buyers?

Other similar marks on

similar goods?

Actual confusion?

Bottom Line: no absolute rules, very factual case-by-case determination

• Be aware of others using marks that create a

“likelihood of confusion.”

• Any evidence of actual confusion?

• Consider subscribing to a trademark watching

service.

• If you find infringement, take action. Send a

demand letter and try to negotiate a solution.

Litigation is expensive so it should only be a last

resort.

• Be aware of potential public relations implications

of enforcement efforts—may have to walk a fine

line.

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Policing Your Mark

• Domain Names are not necessarily trademarks.

• Most companies use their trademark as their domain

name, so it is helpful to register a domain name that

contains your trademark to make it easier for

members to find your website.

• Consider registering other generic top-level domain in

addition to .org given low cost (e.g., .com, .edu).

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Domain Names and Trademarks

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Trademark Roadmap

Identifying Trademarks

Registration

Marking Trademarks

Domain Names

Licensing

Enhancing Protection

Trademark vs. Trade

Name

Descriptive / Generic

Clearance

Policing Your Mark

Avoiding Problems

Intro to Patent Law:

Filings and Prosecution

Presented by Nicki Kennedy

Agenda

What is a patent?

Basic Filing Strategies

Checklists

Portfolio Management Tips

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What is a Patent?

• A patent is a proprietary right granted by the a patent

office

• Patent rights are available worldwide

• There are three types of patents available in the

United States:

1. a utility patent, which covers the functional

aspects of products and processes;

2. a design patent, which covers the ornamental

design of useful objects; and

3. a plant patent, which covers a new variety of

living plant.

• Right to exclude, not a right to practice!

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What is a Patent?

• A Patent is a patent application that has been

examiner and granted by a patent office

• A U.S. patent will have a 7 digit number: 9,123,456

• A U.S. application has an 8 digit serial number:

14/123,456

– If the application is provisional, the serial number begins with

a 6: 63/123,456

• A U.S. non-provisional application has an 11

publication number: 2015/1234567

• In foreign jurisdictions, different letter codes are

generally used to distinguish: A for publication, B or C

for patent

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What is a Patent?

Information about the patent application is shown on the front page

Additional information, including corresponding applications or

priority applications can be found at: http://worldwide.espacenet.com/

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Basic Filing Strategies

1. Provisional application: 12 month place holder

2. Non-Provisional application

3. PCT/Paris: 12 months from earliest application

4. National Stage: 30 months from earliest application

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Provisional Application Checklist

Document Required? Notes

Disclosure Yes

Provisional Cover Sheet Yes

Claims No Suggest filing

Figures No Suggest filing if applicable

Assignment No Suggest filing

Oath/Declaration No

Information Disclosure Statement No

Fee: based on owner of patent rights

Large Entity Small Entity (<500 employees, university or

non-profit)

Micro Entity (less than 4 utility patents; gross income

limitation, or majority of income from

university)

$260.00 $130.00 $65.00

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Additional information is available here:

http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

Non-Provisional Application Checklist

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Required Document

Disclosure

Application Data Sheet

(if company is assignee or benefit claim)

Claims

Figures (if applicable)

Utility Patent Application Transmittal

Fee Transmittal Form

Optional Documents that can be filed later

Assignment

Oath/Declaration

Information Disclosure Statement

Power of Attorney (for outside law firm)

Additional information is available here:

http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent

Non-Provisional Application Fees

• The fee schedule is available here:

http://www.uspto.gov/learning-and-resources/fees-

and-payment/uspto-fee-schedule

• Generally, a large entity will pay $1600.00

– This includes a $280.00 basic filing fee, a $600.00 search

fee and a $720.00 examination fee

• The fee is dependent on size of entity, number of

independent claims and number of dependent claims

– 3 independent claims and 20 total claims are included in the

filing fee

• An independent claim does not refer to any other

claim whereas a dependent claim does.

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Parts of a Patent Application Disclosure

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1. A method of inducing aerobic exercise in an unrestrained cat comprising the steps of:

(a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to

produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface,

said pattern being of visual interest to a cat; and

(b) selectively redirecting said beam out of the cat’s immediate reach to induce said cat to run and chase

said beam and pattern of light around an exercise area.

Examination of a Patent Application

• After a non-provisional patent application is filed, it

will first be examined for formalities

• Substantive examination will then occur (no formal

request is needed, unlike in foreign jurisdictions)

• The filing fee entitles you to receive at least one non-

final office action and at least one final office action

– There is no charge for replying to the office actions unless

you need an extension of time

– There are strict rules for amending claims, both procedurally

and substantively

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Examination of a Patent Application

• Once the claims are deemed “allowable,” you can

pay the issue fee for the application to proceed to

grant as a patent

• To maintain the patent, you must pay maintenance

fees at prescribed intervals

– 3.5 years from grant

– 7.5 years from grant

– 11.5 years from grant

• For a large entity, the fee is:

– $1600.00 at 3.5 years

– $3600.00 at 7.5 years

– $7400.00 at 11.5 years

• Strategic considerations based on technology

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PCT Application Checklist

• Fees for a PCT

application range from

$2000 to 4000

• Recommend including

claims in multiple

dependent form

• Select International

Search Authority

• Select designated

countries (suggest

selecting “all”)

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Required Document

Disclosure

PCT Request (Form PCT/RO/101)

Claims

Figures (if applicable)

Fee Transmittal Form

Optional Documents

Transmittal Letter

Fee Calculation Sheet

Power of Attorney

PCT Application Checklist

• As part of your filing fee, you will

receive an International Search

Report and Written Opinion

• These reports will identify if the

ISA has found your claims to be:

– 1) Novel

– 2) Inventive; and

– 3) Industrially Applicable

• You have an opportunity to

amend the claims and argue with

the ISA

• If the claims are novel, inventive

and industrially applicable, you

may be able to accelerate

prosecution in other jurisdictions

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National Stage Entry

• For most countries, you must enter national stage

within 30 months from the earliest priority date

• Do not wait until the 30th month to decide whether to

enter national stage

– Suggest identifying foreign counsel and working with them at

least 2 months ahead of time to allow for timely filing without

rush fees for the filing or for the translation

– Each jurisdiction has different requirements and your foreign

counsel can best prepare you for costs associated with filing,

maintenance payments (also referred to as annuities), and

procedural requests

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Paris Convention Application Checklist

• Similar to a PCT filing, the Paris Convention is used for three

basic reasons:

1. to expedite a filing

2. if you are only filing in a small number (2-3) of foreign jurisdictions

3. if a jurisdiction that you wish to file in is not a member of the PCT

• Argentina

• Taiwan

• Full list available at: http://www.wipo.int/pct/en/paris_non_pct.html

• Paris Convention extra requirements:

– File in each jurisdiction within 12 months of earliest priority claim

– File a certified copy of the U.S. application

– File a translation of the U.S. application in the appropriate language

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Portfolio Management Tips

• Because of the complexity of the patent system,

especially across multiple jurisdictions, keeping

accurate records is critical

• Many companies outsource payment of maintenance

fees and annuities

• Keeping an internal log of filing dates, conversion

dates, and statuses is invaluable

• Excel sheets are helpful for this

• Evaluate the portfolio often for cost savings and

commercial opportunities

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Questions?

Please feel free to contact us with any questions.

Lindsay Kaplan

Kilpatrick Townsend & Stockton LLP

Suite 900 | 607 14th Street, NW | Washington, DC 20005-2018

office 202 508 5821 | fax 202 585 0031

lkaplan@kilpatricktownsend.com

Nicki Kennedy

Kilpatrick Townsend & Stockton LLP

Suite 900 | 607 14th Street, NW | Washington, DC 20005-2018

office 202 481 9931 | cell 609 346 1095 | fax 202 315 0457

nkennedy@kilpatricktownsend.com

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Thank you!