You may wonder what the difference between goods and services are in a trademark.  Goods are products such as a coffeemaker or a computer.  Services are activities that are performed for the benefit for someone else such as a coffee shop or a computer repair store.  This can still be confusing.  Are your customers paying for a product or for you to perform or help with something specific? If you customer is paying you for a coffeemaker, then you have a good.  If your customer is paying you to repair their computer, then you have a service.  You can list both goods and services in your trademark application but you must list the specific good/services you want to register with your trademark.

If you are filing your trademark application based upon “use in commerce,” you must be using the mark in commerce on all the goods/ services listed.  The definition is the true use of a mark in the ordinary course of trade, but not to merely reserve a trademark.  A trademark shall be deemed to be in use in commerce on goods if a tag or label is affixed or if this is not possible, then affixed on the document(s) associated with the goods or sale of the goods and if the goods are sold or transported in commerce. A trademark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising and the services are rendered in commerce, the services are rendered in more than one State or in the United States and a foreign country and the personal rendering the services is engaged in commerce in connection with the services.

On your trademark application, you must accurately classify and identify your goods/services.  There is an Acceptable Identification of Goods and Services Manual you could look at on the USPTO website (https://tmidm.uspto.gov), which contains listings of acceptable identifications/classifications of goods and services for your information. A failure to accurately classify and identify the goods and services may prevent you from registering your mark and you will not be given a refund of the fees paid.  If the Manual does not contain an accurate listing, it is not recommended to simply choose one that is close.  Instead try to create your own identification.  Your identification should include clear and accurate terms that are understood by the general public.

You may also wonder if you could change your goods/services after the application is filed.  You are allowed to clarify/limit the goods/services listed but you may not expand them.  For example, if you filed for coats, you could limit the goods to a specific type of coat, maybe raincoats or leather coats but you may not change the goods to something else such as shirts.  You also may not change the goods to a service. 

Since it is sometimes very difficult to accurately classify and identify your goods/services, it is always a good idea to consider hiring an attorney to help you with the identification and the whole trademark registration process.

First, you might wonder what patent licensing is.  It is part of how to patent an idea and is the agreement between the owner and a licensee to transfer the interest in a patent to the licensee.  The licensee then can benefit and enforce the rights of the patent. 

The patent owner can transfer the interest in a patent but then will give up the right to the patent.  This will usually occur for a certain period of time.  At this time, the licensee can then make or sell the invention or design and can also make profit from the patent.  

Not all inventors want to make or sell their products or designs. Patent licensing helps you profit from the rights to your invention.  You are able to collect royalties from these sales.

You might also want to know what the advantages of patent licenses are. Manufacturing a product or design can definitely be expensive and also has a high level of risk.  Patent licensing lets you transfer the risk to another party. Also, not all inventors are able to produce a product or design on a large scale. Patent licensing can help you introduce your invention to a larger market, which will also help with sales.  Another great feature about patent licenses is that you don’t have to sign the way the rights to your invention right away.  You can specify a time period in the license.  When this time period expires, you regain the exclusive rights back.  If someone infringes or takes your patent, you can sue but this can become very costly. Instead of suing, you might want to consider patent licensing instead. This would give the competitor the right to your patent but also gives you the right to profit from it. 

You probably also want to know what some of the disadvantages of patent licensing are.  As an owner of a patent, you might want to profit from it.  Patent licensing might be part of your plan but you have to find a licensee or manufacturer first.  Finding an interested licensee may be difficult and also negotiating the license to help you make money is also hard.  There is always the possibility that you could end up being unsuccessful in this process.

It is always a good idea to discuss any ideas you may have with an attorney to make sure the process is a little easier for you and they can help you with the necessary steps to take.

Before you even apply for a patent, you might want to know what kind of rights you would have as a patent owner.  A patent does not give an owner unlimited rights because he/she has received a patent.  The patent owner rights are listed below.

If you register your patent, you have the right to exclude others from using your invention without your permission. You have the right to decide who may or may not use your patent invention for the period in which it is protected. The patent cannot be commercially made, distributed, used or sold by others without the owner’s consent. If you do decide to give someone permission to use your patent, you could do so under agreed terms.  One way you could go about doing this is to license your product to someone else.

If you have a granted patent, you have the right to file a case of infringement if your patent is exploited or stolen. This must be done within six years from the date of infringement.  If you don’t have a granted patent, pre-grant protection is available. This allows you to obtain reasonable damages for certain infringing activities that occurred before the patent’s date of issuance. In order to obtain damages, you would have to show that the infringing activities occurred after the publication of the patent application, that the patented claims are substantially identical to the claims in the published application, and that the infringer had actual notice of the published patent application.

If your invention is patented, the brand recognition could surge and might empower the business to charge the customer.  This would help the value of your business expand in many ways.

The patent is a great asset and has the potential to gain monetary benefits than any other intellectual property if managed in the correct way.  You could license, assign or sell your patent, if needed.  Many pharmaceutical companies have made great profit by doing this. If you decide to sell your patent, you could get money right away and you would be able to recover the cost of development and would not need any money to market the product yourself.  

If is very important to work with an attorney so that they could help you better understand your rights as a patent owner and answer any questions you have.

I often receive comments from people who tell me “software shouldn’t be patentable.” To clarify, under Section 101 of the US Patent Laws, software per se (by itself) is not patentable. But software can be claimed in a patent application in such a way that it does comply with the US Patent Laws. That is, the claims of a patent application can be written such that the software is logic instructions which are stored on a computer readable medium (e.g., a hard disk drive) and executable by a processor to transform a machine (e.g., a computing device) to carry out transformative operations. See the US Patent Office Guidelines for computer-related inventions.

Perhaps this is a technicality, and I’ve had people tell me that this is still “patenting software.” Now we get into a philosophical discussion. For example, I’ve had someone tell me recently that “software is essentially a book written in a different language, and thus software should have stayed within the realm of copyright protection.” While I disagree – that is a book cannot be used to produce any useful result by itself – again, this is merely a philosophical discussion.

The reality is that software can be patented (if new over the prior art as defined by the patent laws, and if properly claimed). The reality is that if you are a small business or startup, or even an individual inventor that has new software, you should discuss your invention with a patent attorney and seriously consider filing a patent application for your software. We can argue all day about whether software should be patented. But the reality is that the smart companies are patenting their software everyday. Don’t believe me? Take 5 minutes and do a quick search at the US Patent Office patent search site to see some of the patents granted to major players in the software industry, like Microsoft and Apple.

Don’t Let Your Idea Become Public Domain!

The US patent law requires inventors to file a patent application for their inventions within a certain amount of time of certain events. These events trigger deadlines called “bar dates.” In the United States, inventors have one year from the date of first public disclosure, public use, publication, sale or offer for sale of an invention, in which to file at least a provisional patent application. Failure to do so prohibits (or forever bars, hence the term “bar date”) the inventor from filing a patent application for that invention. In other words, if an inventor does any one of these things on December 1, 2010, then the inventor must file at least a provisional patent application by December 1, 2011, or the inventor has essentially donated his or her invention to the public domain.
Most foreign countries have an even stricter standard – inventors cannot have disclosed their invention at all prior to filing a patent application.
STOP READING right now if you have done anything which might be considered to have triggered a bar date, and talk to a patent attorney right away to discuss your particular situation.

Denver Patent Law

Will The Broncos Have to Pay for Their “12th Man” Infringement?

Today is a big day in Colorado. Tim Tebow and the Denver Broncos are in the NFL playoffs, and they’re scheduled to play against the New England Patriots today. So what do the Denver Broncos have in common with intellectual property law? Plenty. Colorado patent attorney Mark Trenner of Trenner Law Firm, LLC in Denver explains.

According to the Denver Post article “Broncos could be in trouble with Texas A&M after fan flag” the university may take legal action against the Denver Broncos for using the school’s trademarked “12th man” phrase before last Sunday’s game against the Pittsburgh Steelers. Apparently a man parachuted into the stadium in Denver holding a “12th man” flag, and Texas A&M claims to own a trademark for this.

I checked the US Trademark Office records, and sure enough, Texas A&M does have a trademark registration (trademark registration number 1,612,053 registered in 1990) for “12th MAN” for “novelty buttons, towels, hats, t-shirts, polo-type shirts, golf shirts, sweaters, shorts, and athletic uniforms, in addition to college scholarship services.”

But what do any of these items have to do with the flag at the Broncos game?

Mark explains that with trademark law, potential infringers need to be aware that it’s not just identical uses, but what might be considered to be “confusingly similar.” Here, another sports team used the identical words “12th man” on a flag at a sporting event (I might add that it was a widely publicized and watched NFL television event). A flag isn’t the same as hats, t-shirts, etc., but given the circumstances (a football game with football fans who likely watch both college football and NFL games), arguably there may be an element of confusion. That is, those attending the NFL game may have been “confused” into thinking that Texas A&M was somehow associated with or involved in the parachute stunt – when apparently the university was not involved.

Do they have a case? Possibly. At least the Denver Post article quotes Jason Cook, vice president of marketing and communications at Texas A&M as tweeting that they “will defend our trademark.” And that wouldn’t be the first time either. According to the article, Texas A&M threatened legal action against the Seattle Seahawks for a similar stunt last season. The article says that they settled after “the NFL team was forced to pay the school a fee.”

Denver patent attorney Mark Trenner would like to acknowledge that the following trademarks: NFL, New England Patriots, Denver Broncos, Denver Post, and Texas A&M, are all trademarks of their respective trademark owners.

Inventors often want to know if their employer owns their invention. If the employee has an employment agreement that requires the employee to assign all rights in any inventions related to their employment to their employer, then the answer is usually fairly straightforward and simple.

There are also certain circumstances where an employer may have rights to an invention of an employee even without an employment agreement. For example, if an employer is “hired to invent” (such as a software architect might be hired to develop new software), or the employee uses the employer’s time and other resources to develop the invention (such as using the employer’s computer to write that software code). An employer may also have a “shop right” in an employee’s invention, which gives the employer a right to use the employees invention if the invention is so closely related to the employer’s line of business.

You also need to be careful of not competing with your employer, and if you are moonlighting – not letting it interfere with your ability to work for your employer.

This is all very general information, because it depends on the specific facts and circumstances of the invention, and the employer-employee relation. Ownership rights may also be governed in part by state law, which varies from state to state. But it is wise to check if there are any agreements with the employer, and what those agreements say.

And regardless of whether there is an invention agreement, employees should not do any personal inventing during the time an employee is being paid to work for the employer. It is also wise not to use an employer’s resources, or compete with an employer.

Inventors should always tell their patent attorney right away whether there may be any potential ownership issues related to their invention. It is better to sort out these issues early on.