SimLawyers: Patents and Trademarks

Blake Sorensen

USPTO

• Federal Agency under the Commerce Department

• Receives and Examines Applications for Patents and Trademarks

• Exclusive for Patents, Concurrent with States for TM

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.”

Patent Rights

• Right to exclude others…• From making, using, selling,

offering to sell, importing…• The patented invention…• In the United States…• During Patent Term

Requirements

• Useful

• Novel

• Non-obvious

• No bar to application

Types of Patents

Utility Patents – Process– Machine– Article of Manufacture– Composition of Matter– Any Improvement

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

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

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.

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

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)

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

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!

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

Trademark Infringement

•Likelihood of consumer confusion

•Factors• similarities in sound,

appearance, meaning

• relationship between goods/services

Protect Yourself

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?

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

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

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.

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

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.

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

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

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.

Thank you

Blake Sorensen

191 Peachtree St., Suite 4300

Atlanta, GA 30303

(404)-954-5047

bsorensen@merchantgould.com