Reader Question: Will my trademark application be denied if...

"Suzy" asks: If I look on uspto.gov and see that there is a company already trademarked under a name similiar to my company's name will my trademarked registration be denied?
 
My response:
 
Not necessarily. Just because someone else has trademarked a name similar to yours does not always hurt your chances for getting a trademark.
 
A perfect example is the trademarked name "Delta".
 
There are two companies using this name. First, Delta Airlines. Second, Delta Faucets. How can these two companies claim the trademark for Delta? The answer lies in trademark categories.
 
As of this writing there are 45 trademark categories (divided by products and services). A few examples of categories are machinery products, musical instruments, medical device products, rubber products, restaurant services, communications services, and on and on.
 
Delta Faucets and Delta Airlines are both allowed to use the trademark Delta because they are registered in different categories. Delta Faucets owns Delta in the "Household Goods" trademark category. Delta Airlines owns Delta in the "Transportation Services" trademark category.
 
So to answer your question, it depends on what category the trademark is registered in. That is only one variable. There are other reasons why your trademark will or will not go through.
 
If you want a definitive answer on whether or not your name is eligible for trademark, we can conduct a comprehensive trademark search. There are two good reasons to conduct a search.
 
1) You don't want to file if someone else owns the mark. It will obviously be rejected, and you'll have wasted time and money filing.
 
2) You don't want to infringe upon someone else's mark. I can't tell you how many times I've talked to a business owner who received a "cease and desist" letter notifying them they are infringing on a trademark AFTER spending thousands of dollars printing up business related items (like business cards, signage, advertisements, menus, etc.). Everything has to be trashed. Imagine spending $1,000, $2,000, $10,000 or more and having to start all over.
 
We can avoid all of these hassles with a simple trademark search. If you'd like more information how trademarks work, you can request to have a free informational package mailed or emailed to you. Just click on the following link - http://ideaattorneys.com/free-patent-information/free_trademark_information_request.html
 
Or give us a call at 1-866-433-2288
 
 
Posted By John Rizvi In Trademarks 0 Comments

Patent Writing Secrets: What's the Hook?

Before beginning to draft the patent application there is one step you must take to make sure you get MAXIMUM protection for your idea (and to make sure no one gets around it).

And that step is establishing the hook. Allow me to explain what a hook is with a rather famous example in patent circles.

Years ago a man caught a rather tragic news story.

A woman had died from carbon monoxide poisoning while trapped in her garage. The story goes the woman drove into her garage and shut the door behind her BEFORE shutting off her car (this was up north, in the winter, where people normally do these things). By some series of events the woman fell out of her car before she was able to shut the engine off. Trapped on the ground unable to open the garage door or turn off her car, the woman suffocated to death.

Now this is where the story gets interesting (from a patent perspective)…

The man watching the news story said to himself, “Gee, why don’t they just make a garage door that automatically opens when carbon monoxide is detected?” And an idea was born.

The hook is basically one sentence that encompasses the spirit of your patent. In this case - A garage door that automatically opens when carbon monoxide is present.

Let’s look at some other patented products that are on the market to see if we can determine what the hook is:

How about those little cardboard sleeves you see around coffee cups? Patent #5,205,473 (which you’ll see plastered on the side of Starbucks coffee cup sleeves) hook is:  Corrugated beverage containers and holders are which employ recyclable materials, but provide fluting structures for containing insulating air.

What about the millions of computer mouse’s (mice?) that have been produced over the years? Patent # 3,541,541 (long since expired) is for a “X-Y Position Indicator For A Display System”

Have you ever given any thought to the common zipper? Patent #557,208 (not the first for a zipper) explains: “A device for detachably connecting the flaps of shoes or other articles

So, how do you establish the hook? Here are a few guidelines:

  • How does your invention do it easier, faster, and/or cheaper? In the case of the zipper, it would be faster to put on clothes (much faster than using buttons or tying a string).
  • What’s absolutely new? Computers have obviously been responsible for a range of new inventions, but how to easily control them…to communicate with them. The mouse made it easy to do tasks that – at one time – needed to be typed by hand (a very time consuming process).
  • What’s different about it? In the case of the coffee cup, it’s much easier to hold sturdy cardboard than flimsy foam insulated cups.

The main thing to look for is…what’s the big benefit? How can this benefit someone’s life? Why will the world find this invention worthy for a patent? Establish the hook with this benefit in mind, and you are well on your way to a very good idea.

Posted By John Rizvi In Patents 0 Comments

Reader Question: Should I take my idea to an investor before getting a patent?

L.C. asks:

Quick question. Would there be any issues going to angel investors, or venture capitalists before starting the entire patent process? Would that spark any legal trouble down the line?

My answer.

It's not that it would spark legal trouble down the line. It's that it could. Let me explain...

The patent process grants you a few very specific and very attractive rights. Notably, the right to prevent others from making, using, selling, or distributing the patented invention without your permission.

However, you do NOT get these rights before you patent the invention.

So that means that if you disclosed your invention to anyone (say, an angel investor or venture capitalist) and they "stole" your idea...you could be out of luck.

Now, one of the common ways people try to protect their rights before they get a patent is by using a non-disclosure agreement (or NDA). A common definition of an NDA is a legal contract between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. It is a contract through which the parties agree not to disclose information covered by the agreement. An NDA creates a confidential relationship between the parties to protect any type of confidential and proprietary information or trade secrets. As such, an NDA protects nonpublic business information.

That's a mouthful, and basically it means - if you steal my stuff I get to sue you.

The big difference between a patent and an NDA is that the patent is a government document certifying ownership of (intellectual) property, whereas a NDA is a contract between two people. Which do you think carries more weight?

(Note: I've produced a short video on the limitations of an NDA. You can find it here - http://www.youtube.com/watch?v=fNLioqZvOPE)

The second danger you face if disclosing your invention before patenting it (to anyone other than a registered patent attorney) is if they file for the patent before you do. Right now, the U.S. is a first to invent country, which means whoever invents the thing first has rights to it. That all changes on March, 16, 2013 when the U.S. switches over to a first-to-file system (under the America Invents Act).

Basically, the ONLY person you should be disclosing your invention to is a registered patent attorney. Anyone else, and you're taking a risk.

Posted By John Rizvi In Patents 0 Comments

Problems to Products to Profits

I am NOT alone.

It always amazes me how many people share my same problems (and are on the constant lookout for solutions - i.e. new products - for those problems).

The other day a friend sent me a picture (below) of a bunch of "electricity splitters" plugged into each other...with one power outlet running a dozen or so devices. I looked at that picture and image the inventor of the power strip, getting frustrated at his growing number of devices/limited power sources. And finally inventing a solution that you can find in every office and home around the world.

Yes - necessity is the mother of invention.

With that in mind I browsed the internet for more "unorthodox" inventions. Now, it's easy to laugh at these pictures, and you should. But remember...these people are CRYING for solutions to their problems (and in many cases people have paid MUCH MORE for a better solution).

Nobody likes drinking warm beer

The age old dilemma: How to hold your drink if your hand is broken

And of course, addressing the problem of not enough cup holders.

Remember, people have problems that they need solved. Whereas these three inventions show how people took the cheap way out...there are people out there willing to spend good money to solve their problems.

Case in point, the other night I was having dinner at a friends house. This particular friend loves wine and thinks nothing of spending $100 on a bottle of wine. And then there are the fancy wine bottle openers, the expensive glasses, and other assorted nic-nacks.

One in particular is the Thermoelectric chiller.

Essentially, it keeps your bottle of wine at a controlled temperature. Cost - $109.

I asked him why he just doesn't use a bucket of ice water (cost - maybe $10). It gets the bottle wet, was his answer.

He was happy to spend ten times as much to keep his bottle of wine cool, just so the bottle would not get wet. There is an important point there. Solve a problem and people will gladly pay (just don't forget to patent it so you don't have any competition!)

Posted By John Rizvi In Patents 0 Comments

Inventor Celebrated by World's Largest Search Engine

On April 24, Google celebrated the birthday of Gideon Sundback, considered the genius behind the zippers most people use today. The search engine is commemorating the occasion with a large, interactive zipper in place of its usual logo.Inventor Gideon Sundback

In 1917 Sundback patented the "Separable Fastener".

It is important to note that Sundback did NOT invent the zipper. That honor goes to, first, Elias Howe (who patented the "Automatic, Continuous Clothing Closure") and then Whitcomb Judson who created the "Clasp Locker", the precursor to the device we use today.

However, neither device gained popularity. And that is the main reason why Sundback is getting all this attention. His improvements to the zipper made it both easy to use AND marketable. He didn't invent the thing...but he did make is so darned easy to use as to be irresistible to the buying public.

So, what did he do to popularize the zipper?

First, he increased the number of teeth per square inch. Next, he "scoop-dimbled" the teeth, strengthening the zipper. And finally he created a slider to open and close the interlocking mechanism, creating the type of zipper most of us are familiar with today.

There is a great lesson here. As an inventor you do not have to start out from scratch. If you simply improve an existing device to the point where it is "idiot-proof" and easy, then you will be the one who goes down in history.

Click on the video below to see the Google tribute in action.

Posted By John Rizvi In Patents 0 Comments

Cool Patent of the Month - Creepy Crawlies on Your Skin

Imagine if every time someone called you, your skin vibrated. Sound kind of weird? Well, that’s exactly what Nokia is planning to do with a new piece of patent pending technology called “Haptic Communication”.

What is this new patent application about?

The technology looks fairly simple. It’s just a piece of fabric that “vibrates” according to the strength of a magnetic field. What’s interesting though is that this fabric is attached to your skin. The unusual use is pairing this to a cell phone, so that you – and only you – will be able to know when it rings. I’m sure they’ve got other uses in mind. Imagine a battle zone full of soldiers equipped with multiple patches. Buzz the one on the right arm and the whole platoon heads right. Activate the one on the leg and watch as everyone hits the deck.

Silently communicating with a multitude of people at once…there are plenty of possibilities. Here is an artistic rendering of the technology.

But, now here’s where it gets really weird. Nokia apparently foresaw that it might seem awkward to have a random patch on your body, so the patent explains how this can be embedded INTO the body in tattoo form. You would just have to use a special ink that responds to the magnetic field.

Now that’s straight out of a James Bond movie. Imagine a spy inking a small birthmark like tattoo into his leg and being able to communicate via Morse Code back to his commanding officers. What if you could activate the technology simply by twitching muscles? It’s a whole new world of communication.

Posted By John Rizvi In Patents 0 Comments

Patent Success or Failure Hinges on This...

I am often asked this question:

"Should an Inventor build on his Strengths or try to overcome his Personal Weakness?"

Well, I recently had to choose between the two. Like many people with a career that involves long periods of sitting behind a desk, I struggled with my weight. I’ve never enjoyed exercise, but luckily I do not have a sweet tooth either. To tackle this problem I chose to “build on my strength.” Instead of forcing myself to workout to get back into shape, I decided to eat healthier and eat less. Since then I’ve lost over twenty pounds.Weak vs. Strong

All of my significant success has come from situations where I ignored my weaknesses and maximized my strengths. On the other hand, my greatest failures have come from times I had to rely on my weaknesses and my strengths did not factor into the equation.

Now, what’s this got to do with patents?

This concept is of the utmost importance when it comes to choosing between opportunities, products, or ideas you want to patent.

Frequently, the inventors I meet with have two, three, half a dozen ideas they want to patent. Usually, all at the same time. There’s the idea for a new toilet. A solar powered can opener. And a cell phone application. Whatever. Tons of good ideas. But, the result is always the same. When energy gets divided among multiple projects nothing gets done.

Worse, much money is spent. Not a whole lot comes back.

But see, that’s the point. That’s what this is all about, right? Inventing, protecting with a patent, and then selling your idea to the world? Turning your dream product into a profitable reality? Coming up with the next bid idea that will make you millions.

Listen, patent success hinges on this:

You must focus on the single good idea that also capitalizes on your strengths and not on your weaknesses.

Think about how some of the greatest inventors the world has ever seen used this concept to their advantage.

If you can’t build your invention, don’t worry. Invent away and partner with a machinist or engineer (Henry Ford invented many parts for his car but hired machinists to build them?) If details aren’t your thing, hire a design crew. Thomas Edison had a whole team of tinkerers, called the muckers, to test out his ideas (one team of muckers worked on the alkaline storage batter for almost a decade). And of course, if you don’t understand the legal side of patent law, hire a patent attorney to make sure you get maximum protection.

This is the way things get done…products brought to market…fortunes made…how people go from a mind full of ideas to a bank account with lots and lots of zeroes! To make sure you get from where you are now, to where you want to be, focus on your strengths!

Of course, if you find yourself in need of a patent attorney, I’m here for you. And if you want to go out on your own, I can help you out too. Just sign up for our 10 Steps to Patenting Success email series. It shows you everything you need to know about protecting your idea through a patent. You can find it at http://ideaattorneys.com/free-patent-information/free_patent_information_request.html

Posted By John Rizvi In Patents 0 Comments

The Trademark Checklist: 7 Steps You Must Take Before Filing

Not a day goes by that I don’t get a call from a distressed business owner who – after using one of those ‘trademark filing’ services online – contacts me because their trademark got rejected.

And it always brings to mind the origin story of the lucky horseshoe.Trademark Mistakes

Legend has it a blacksmith (who later became St. Dunstan) was approached by a man who asked that horseshoes be attached to his own cloven feet. Dunstan recognized the customer as Satan and explained that he must shackle him to the wall to perform the service. While hammering, Dunstan deliberately made the job so excruciatingly painful that the bound devil begged for mercy. He refused release until the Devil promised to never enter a house where a horseshoe was displayed from the door.

Hence the reason today’s door “knockers” look like horseshoes.

The application for and granting of a trademark is a process. One in which several steps must be taken. Not paying proper attention to any one of these steps can easily cause your trademark to be rejected. And not a horseshoe, rabbits foot, four-leaf clover or any other good luck symbol will help you otherwise.

For this reason we always use our “Trademark Checklist” before filing. This ensures we don’t leave anything to luck and gives you the best chances of getting one.

Let’s take a closer look at these 7 steps.

  1. Before filing for a trademark you should perform a search to see if it is available.
  2. There are multiple trademark categories (45 to be exact). If the search results show your word or phrase is already "taken", you still may be able to use it if your product or service falls into a different categoryTrademark Checklist
  3. Be careful of spelling when searching for a mark. Your mark cannot be "confusingly similar" to other marks (example: you cannot trademark Nyki because it sounds too much like the shoe brand Nike)
  4. If your mark is available, you still may not be able to get a trademark if it is too descriptive of the product or service
  5. When filing the trademark it is better to leave the category blank and let the trademark examiner decide what category your product or service falls into (there are other tricks to filing that make it more likely your mark will get approved)
  6. If your trademark is not filed properly you will receive an "office action" from the trademark examiner. This is a document that basically says "We do not approved your trademark for reasons x,y, and z". It is then your responsibility to respond to this action with your argument on why you should get the trademark. Hiring a lawyer to respond to an office action is generally more expensive than hiring a lawyer to fill out the trademark application in the first place.
  7. You can file in multiple categories. Some places charge you multiple times for this. We don't.

If you need help trademarking your name, then we've prepared a short package to guide you through the process. It's absolutely free for people who need to get their name protected. You can get a copy one of three ways:

1. Request your copy online at http://ideaattorneys.com/free-patent-information/free_trademark_information_request.html
2. Call us at 1-866-New-Ideas (1-866-433-2288)
3. Or if you're in the South Florida area, stop by our Coral Springs office at 11575 Heron Bay Boulevard suite 309

Posted By John Rizvi In Trademark Basics 0 Comments

Patented 120 years ago: The electric tattoo machine

If you are an inventor with tattoos, you must read this...

I just tripped upon this interesting little story about the patent behind the electric tattoo machine.

Seems this tool was based on an engraving machine invented by Thomas Edison. It just goes to show how you can take an invention that is already out there...add a little twist of your own...and come up with an entirely new patent.

Click the link for the full story:

http://reason.com/blog/2011/12/08/got-a-tattoo-say-thanks-to-the-electric

 

Posted By John Rizvi In Patents 0 Comments

The Story of the Sexy Screen Starlet Turned Patent Holder

The November 28th, 2011 edition of Newsweek magazine featured an interesting article on a rather unexpected inventor – the “most beautiful woman in the world” actress Hedy Lamarr.

The story of how she became a patent holder is an interesting one…

It start in 1931 with a Czech art film called Ecstasy. In it is a nude scene that caught the eye of ammunition manufacturer Fritz Mandl. They marry, and the young bride is soon attending dinner parties with generals and scientists who regale her with their stories of advances in missile technology.

Fast forward ten years and she’s in Hollywood hearing stories of German torpedoes downing boats in the North Atlantic during the blitz. Recalling the details of the discussions with her ex-husbands colleagues, she turns inventor to help the war effort.

The Newsweek article mentions a few of her inventions: the radio-controlled submarine missile-guidance system, the anti-aircraft shell with a proximity fuse and the fizzing cube (turns water into soda).

But the one I found most interesting is the Secret Communications System.

 

Posted By John Rizvi In Patents 0 Comments