Tag Lines

Tag lines can be an important part of a brand and your overall trademark strategy, if used effectively.

One way to effectively use tag lines as part of your trademark strategy is to describe the product or service when the trademark or logo is unclear by itself. For example, a strong trademark is a completely made-up trademark, like the famous Coffee House (yes, you know the one I am talking about even without my having to name it here in this article). But until everyone knew what they were selling, it probably helped to use a tag line describing their product (“coffee”).

Another effective way to use a tag line as part of your trademark strategy is to use a trademark which conjures a pleasant image in the mind of the customer. The customer will then come to associate your trademark with that pleasant image. For example, a travel agent may use a tag line saying “. . . taking the hassle out of travel.” Now when customers see the travel agent’s trade mark, they will think of stress-free travel, an obvious positive.

Of course there are many ways to use tag lines as part of an effective trademark strategy, and we have only scratched the surface here.

Here’s a Tip when selecting a tagline to use as part of your trademark. Be creative . . . and put some thought into it before you adopt a tagline as part of your brand. There is nothing worse than a brand that changes every couple of weeks, months, or even every couple of years. The key to a strong brand is consistency . . . because consistency helps build customer loyalty. And customer loyalty can mean a successful business.


Trademark Basics

I am often asked “Do I need a Trademark for my invention?” Patents and Trademarks are different kinds of legal protection. Trademark protection may be available for the name and/or logo used to identify your goods or services in commerce.

A strong trademark (or service mark) can be key to a successful marketing campaign. Ultimately, customers identify the mark with the goods or services your business is selling.

Some advantages of Federal Trademark Registration include . . .

1. Others cannot register a mark that is confusingly similar to your mark.

2. A trademark registration provides a legal presumption of your exclusive right to use the mark nationwide, and serves as constructive notice of your claim of ownership in your trademark.

3. A U.S. trademark registration provides a basis for registering your mark in foreign countries.

4. A trademark registration allows you to bring an infringement action in Federal Court, file with U.S. Customs to prevent others from importing infringing foreign goods.

Once your trademark is registered, you can use the encircled-R notation ® to designate your trademark.

Some Common Pitfalls to avoid . . .

1. Selecting a weak mark.

2. Selecting a mark that is generic or merely descriptive of your goods or services.

3. Selecting a mark that is confusingly similar to someone else’s mark.

4. Failing to fully and accurately identify all of your goods and services in the trademark application.

Hire an attorney to help you identify any existing marks that may be considered confusingly similar to your mark before you start using a trademark. Your attorney can also guide you through the selection process to help you identify a strong trademark for your products or services. Then your attorney can help you with all aspects of state and federal trademark registration, and advise you on the proper use of your trademarks so that you are able to build the strength and value of your trademark.

Visit www.trennerlaw.com for more information about costs to register a trademark.


Copyright Basics

I am often asked “Do I need a copyright for my invention?”

Copyright protection may be available for original works of authorship that are fixed in a tangible medium of expression. Protection is not available for facts, ideas, systems, and methods, although protection may be available for the expression of those facts or ideas.

Some Advantages of a Federal Copyright Registration include . . .

1. Establishes a public record of your copyright claim.

2. Copyright registration is required before you can file a court action for infringement.

3. A copyright registration is prima facie evidence of validity of your copyright if the registration is made within 5 years of the first publication.

4. A timely filed application for copyright registration allows the owner to seek statutory damages and attorney’s fees in an infringement action without having to prove actual damages and profits.

5. A copyright registration allows the owner to file with U.S. Customs to prevent others from importing infringing foreign goods.

Some Common Pitfalls you should avoid . . .

1. Failing to have a written agreement requiring an independent contractor to assign all rights in the copyright to you.

2. Not including a copyright notice on your works.

3. Forgetting to register your copyright with the Library of Congress.

Hire an attorney to help you identify copyrightable materials and register your works with the Library of Congress. Visit www.trennerlaw.com for more information about costs to register a copyright.

Should I file for international patent protection?

I am often asked the question “Will my U.S. patent application protect my invention throughout the world?” The answer is No. U.S. patents are only valid in the United States.

However, if you are granted a U.S. patent for your invention, that U.S. patent can be used to stop others from making, using, or selling an infringing product in the U.S. and from importing an infringing product into the U.S.

A U.S. patent will not, however, offer any protection of your invention entirely outside of the U.S. For example, a U.S. patent will not prevent others from making, using, and selling your invention in Europe, China, Japan, and so on. For that, you will need a patent issued by the foreign country’s patent office (e.g., the European Patent Office for members of the EU).

This question is usually followed by “Should I file patent applications outside of the United States?”

I never answer that you shouldn’t file a foreign patent application. But consider this:

1. What is the market for your invention? The U.S. market is one of the largest markets, if not THE LARGEST MARKET, in the world for most inventions. If you can corner the U.S. market, you’re likely going to do very well.

2. Foreign patent applications are expensive. If that’s not enough for you, then you will need to file in one or more countries outside of the U.S. These filings can be expensive – just to file a patent application in another country can cost thousands of dollars in foreign attorney fees, foreign government fees, and translation costs. Not to mention having to argue your case in a foreign patent office, and then pay issue fees to the foreign patent office.

3. Are you willing to enforce your patent outside of the United States? Foreign patents are hard for individuals and small businesses to enforce. Even if you have an issued patent in another country, you’ll have to police it. That is, you’ll have to find infringers in that other country. Then you’ll have to hire a foreign attorney to go after the infringer. Even if you win your case, you’ll have to collect your judgment, which likely means hiring a foreign collection agency.

If you’re considering filing foreign patent applications, keep in mind that most foreign patent offices have an absolute novelty requirement. That is, you cannot publicly disclose your invention at all prior to filing a foreign patent application. Contact a patent attorney right away for more information about foreign filing.

What is an Office Action from the Patent Office?

Your patent attorney just sent you an Office Action he or she received from the Patent Office for your patent application. Here are some of the types of objections and rejections you may be facing.

Objections to the Specification. These are typically minor corrections that the Examiner is requiring be made to the written description in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objections. Examples include amending the title of your invention to be more descriptive, amending the abstract of your invention to be 150 words or less, and correcting minor typographical errors.

Objections to the Claims. Again, these are typically minor corrections that the Examiner is requiring be made to the claims in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objection. Examples include providing proper antecedent basis for a claim recitation, correcting claim numbering and claim dependency, as well as correcting minor typographical errors.

Claim Rejections. There are five common claim rejections. Each of these rejections are based on a section of the US Patent Law: Section 101, Section 112 (first paragraph), Section 112 (second paragraph), Section 102, and Section 103 rejections. The first three types of rejections (Section 101 and 112) are typically formalities that can be easily dealt with by amendment. The Section 102 and 103 rejections are often referred to as “substantive” rejections and often require some creativity to amend the claims and argue the basis for patentability of your invention.

Your patent attorney can give you more guidance, and prepare the necessary Response with your input. You should not rely on anything here as specific advice for preparing a Response to an Office Action.