Both Anton Hopen and Andriy Lytvyn are board certified in Intellectual Property Law by the Florida Bar. Board certified attorneys are the only lawyers allowed to use the terms specialist, or B.C.S. for Board Certified Specialist when referring to their legal credentials. Certification is the highest level of evaluation by The Florida Bar of the competency and experience of attorneys in the areas of law approved for certification.
What does it mean to be certified?
Board certified lawyers have a minimum of five years in law practice.
Certified lawyers must show substantial involvement in the field of law for which certification is sought.
They must receive a passing grade on the examination required of all applicants or meet strict criteria to exempt the exam before officially earning board certification; each specialty has a different exam.
Certified lawyers must satisfy a peer review assessment of their competence in the specialty field plus character, ethics and professionalism in the practice of law.
Certified lawyers must satisfy the certification area’s continuing legal education requirements.
Board certification is valid for five years, during which time the attorney must continue to practice law and attend Florida Bar-approved continuing legal education courses. To be recertified, lawyers must meet requirements similar to those for initial certification.
Anton Hopen
Andriy Lytvyn
Andriy Lytvyn on NBC regarding NFL Redskins Trademark
Anton Hopen
Andriy Lytvyn
Andriy Lytvyn on NBC regarding NFL Redskins Trademark
Anton Hopen speaking at USF
How does the certification program help a client or potential client?
Board certified lawyers’ experience and competency have been rigorously evaluated, and Florida lawyers are allowed to refer to themselves as board certified specialists or to use the letters B.C.S. to indicate Board Certified Specialist when referring to their legal credentials.
Board certified lawyers have met The Florida Bar’s highest standards for special knowledge, skills and proficiency in various areas of law and professionalism and ethics in the practice of law.
How many lawyers are certified in Florida?
Seven percent of eligible Florida Bar members – approximately 5,181 lawyers – have earned board certification in one or more of the 27 specialty areas. Only 140 of those board certified members have the certification in Intellectual Property.
Improper branding can lead to invalid trademark specimens and a loss of registration rights. Trademark applications, renewals and declarations of continued use require the trademark applicant or owner to submit evidence that the trademark is used in commerce. For services we almost universally use the trademark owner’s website. For tangible products, the trademark must be “affixed” to the item and thus a digital photo of the trademark on the product or its packaging generally works. A common problem we run into is that of “mutilation” of what was applied for or registration. For example, if a client came to us and wanted to register CHING’S CHIPS™ for potato chips we would respond as follows:
A well-informed trademark examining attorney at the U.S. Patent & Trademark Office would require us to disclaim the term CHIPS from the mark as a whole. Therefore, it would make more sense only to register CHING’S as a standard character claim (any presentation of the word) because that is the dominant feature of the trademark.
Specimens for the trademark CHING’S
However, when it is time for the marketing department to product the packing we might see something like the following:
Specimen #1 is a mutilation of the original mark. We never registered SUPER nor CHIPS. The brand is CHING’S (which can be upper case, lower case, title case or in any font).
Specimen #2 is still a problem because the terms CHING’S and CHIPS are on the same line, with the same font forming a new trademark….CHING’S CHIPS.
Finally, Specimen #3 is acceptable because CHING’S is denoted in a larger font, on a separate line and even in a separate color than the term “Chips.” This will give the company the ability to use CHING’S as a “house mark” for other items such as CHING’S pretzels, CHING’s cereal or the like.
In conclusion, it is important that there be good agreement between what is registered and the trademark branding of the specimens on products and services to the consumer. If you ever have any questions on this, do not hesitate to contact our office.
One great tip I received as a younger patent attorney was to name components to express function. Our co-founding partner, Ron Smith was a master of drafting claims. His sister, an English professor used to “grade his papers” by reading his patent applications and bleeding (using a red pen) all over them. For example, the phrase “in order to” should not be used. Just say “to” because “in order” is redundant.
On a more substantive issue, it is good practice in mechanical or electrical cases to name components with a name that expresses their function. Thus, calling something a “member” or “an elongate member” or “a cylindrical member” should be avoided. For example, here’s a phrase that could be improved:
“a member extending between the two arm rests and behind the back, wherein the member stabilizes the back;”
If the member stabilizes the back, name it a stabilizer instead of a member. That makes the phrase more straightforward:
“a stabilizer extending between the two arm rests and behind the back for stabilizing the back;”
Or perhaps better yet:
“a back stabilizer extending between the two arm rests and behind the back;”
Notice how a function-descriptive name like “stabilizer” shortens the phrase and an even more function-descriptive name like “back stabilizer” shortens it even more. Using function-descriptive names also makes it easier to remember the various parts as the application is being written.
Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.
Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.
The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.
If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.
A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.
In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.
The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.
A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:
Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.
Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.
A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.
In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.
Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.
You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.
Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.
A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.
The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.
A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.
Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.
Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.
No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.
Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.
A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.
Experienced and successful inventors know to patent what is necessary. Often we hear about protecting a “system” or “complete apparatus.” That is not the way the patent system works. Rather, it rewards incremental improvements in technology. These improvements advance the state of the art. While the patent restrains trade for 20-years on that improvement, it publishes the innovation so that others can build and further enhance it.
One of our valued clients is Hyalta Aeronautics which develops advanced drone technologies. Just one of their aircraft designs is branded Hydrone™. This drone operates underwater, in multiple flight modes and on the ground.
Submersible drone exiting submarine
Submersible Hydrone exiting submarine.
Hydrone drone on surface of water.
Hydrone in terrestrial mode on beach.
Drone in flight mode over mountain terrain.
Credit: Hyalta Aeronautics LLC. Used with permission.
Hydrone can perform missions and tasks that no other aircraft can currently achieve. However, drones are generally well-known in the art. Furthermore, drones flying in hover and Newtonian flight are known. Patents protect the technology itself, not the capabilities or objectives of the technology.
Hydrone unmanned aircraft in submersible mode exiting submerged U.S. submarine.Credit: Hyalta Aeronautics LLC. Used with permission.
Just one (of many technologies) needed to make the Hydrone operate in multiple environments and modes involves a mechanical couplings. For example, these couplings relate to a shrouded, convertible ducted fan engine that rotates in multiple configurations. The U.S. Patent & Trademark Office granted U.S. Patent 10180083 on January 15, 2019 to Hyalta for this technology. Look at a representative patent drawing below. You don’t see underwater embodiments or even image of a 4-engine drone. Rather, it is the indispensable advance in the mechanical configuration of drive shaft, shroud and linear drive motor that enables all the advantages of the actual commercial product.
U.S. Patent No. 10180083
Hyalta’s Patent Strategy
Hyalta Aeronautics knew exactly what was necessary to patent to achieve the commercial advantages of the Hydrone product and obtained exclusive rights to that innovation. Consequently, without the ‘083 patent technology, a competitor simply cannot create a parity product and thus the patent serves its intended purposes:
a barrier to competition;
exclusivity for 20+ years; and
adding an identifiable asset to the valuation of the company.
In conclusion, we represent some of the most innovative companies nationally like Hyalta Aeronautics and appreciate the trust they put in our firm.
For makers of apparel, trademarking a new brand may be the single most important investment in the value of the business. Brands like CALVIN KLEIN, CHRISTIAN DIOR, LACOSTE and RALPH LAUREN are international fixtures and worth billions of dollars.
Avoiding Ornamental Refusals
Unfortunately, for new designers, one of the most common mistakes is applying their brand improperly to their clothing line as ornamentation. Silkscreening your brand or logo onto the center of a clothing item will likely draw a rejection as mere ornamentation.
A well-informed trademark examining attorney would find this is not a proper specimen of trademark use. Rather, it using the Smith Hopen logo as “decoration.”
A well-informed trademark examining attorney would find this is a proper specimen of trademark use.
Trademark examining attorneys at the U.S. Patent & Trademark Office (USPTO) will frequently note that consumers have been conditioned to recognize small designs or discrete wording as trademarks if placed, for example, on the pocket or breast area of a shirt. However, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed in a different location on the clothing.
The best place to affix a brand for apparel is on a tag at the collar or a string-connected labels to the clothing.
Branding Apparel on a Budget
Another way to quickly satisfy the USPTO requirements is to print your trademark on a sheet of clear adhesive labels. These can be purchased at any local office supply store. Stick these labels onto the shirts, pants, accessories, etc… This is what the trademark examining attorney is looking for….a direct connection to associate your trademark with the goods you are selling under the brand name.
Customer Impressions of Brand
Now that you know how to trademark clothing, remember to take every opportunity to expose your brand to the potential consumer. This helps solidify your trademark position and can increase the recognition of your brand. Remember that the quality of your tags, branding and promotion should be in alignment with the price-point of your apparel. Extremely high-end apparel requires high-end labeling.
Well-informed, experienced patent attorneys strive to respond to office actions as quickly as possible. Office actions on a patent application are issued from patent examiners at the USPTO. Getting a patent is a balancing act between two objectives:
having a patent that is narrow enough to be valid over the prior art; and
having a patent that is broad enough to capture infringing products and activities.
In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.
It is human nature to forget
Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to. Quickly responding to office actions improves the chance the case will keep moving along.
If we wait until the 3-month statutory deadline to respond (or longer with extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.
Don’t Lose Patent Term
Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to respond to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay. Consequently, if you do not respond quickly to patent office actions you are giving up potentially valuable patent term.
Contact us Now and Keep the Momentum
Do not delay…work with your patent counsel to promptly respond to your pending office action.
Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.
Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.
The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.
If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.
A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.
In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.
The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.
A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:
Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.
Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.
A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.
In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.
Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.
You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.
Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.
A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.
The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.
A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.
Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.
Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.
No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.
Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.
A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.
The timeline for federal trademark registration typically takes one year but that often depends on the strategy for filing. There are generally two types of trademark registration filings: (1) in-use; and (2) intent to use. An in-use filing is self-explanatory, you are already using the trademark in commerce. An intent-to-use application typically takes longer because we submit evidence of use at a later stage. Irrespective of filing type, there are six milestones to watch for in the trademark registration process.
#1: Searching the Trademark Candidate
The eligibility of a candidate trademark for federal registration is determined by the federal trademark register which includes existing, live registrations and earlier-filed pending applications. Typically a client will present several trademark iterations for searching. It takes about 15-45 minutes for an experience trademark attorney to conduct a preliminary clearance of the mark for registration or determine it will have issues. If the investment in the brand is a multi-million advertising campaign and possible international protection, then a more extensive search makes good sense. However, for most trademark filings, the mark should be cleared within a day or so. Trademark filings are time-sensitive. Ownership of federally registered trademarks is typically determined by the earliest filing filing date.
#2: Filing the Application
Timing-wise, this is the most important milestone of the trademark registration process. Filing early is critical. We have direct experience in seeing a client lose trademark rights by filing their application later on the same day as a competitor.
The trademark application is filed electronically and a confirmation receipt is immediately received. For an intent to use application, only: (1) the trademark; (2) the recitation of products/services; (3) declaration; and (4) payment is required to secure a filing date. It should be noted that for a number of reasons, trademark should only be filed in the name of a corporation or company, not in the name of an individual or partnership.
#3: Examination
Trademarks are substantively examined by a trademark examining attorney at the USPTO approximately three (3) months after filing of the application. Common refusals include:
Likelihood of confusion with an existing registration or earlier filed trademark application;
The mark is merely descriptive and conveys a characteristic, ingredient or purpose of the underlying product or service sold under the mark;
The mark is generic and incapable of trademark significance; and
The recitation of goods or services is unclear and needs correction.
If the mark is initially refused registration, the attorney has six months to respond but unless there is a good reason to delay, the turn-around is much faster. For many issues, a simple call to the USPTO trademark examining attorney may address the issue.
When the USPTO trademark examining attorney finds the application has no issues barring registration, an important milestone has been reach. The trademark examining attorney will approve the trademark application for publication.
#4: Publication for Opposition
About three months after the trademark is approved for publication, it is published in the Official Trademark Gazette. This previously was a hard-copy publication that trademark attorneys would scour to make sure no pending application would conflict with their existing clients’ registrations. Now there are automated trademark watch services. If a party believes it would be damaged by registration of the trademark it may file an opposition with the Trademark Trial and Appeal Board (TTAB). If the party cannot initially decide whether to file an opposition, they can (without cost or disclosing why) file an Extension to Oppose the trademark application.
Trademark oppositions are rare but we have handled many of them. They are administrative proceedings governed by the federal rules of civil procedure and include discovery and trial phases. Most of the discovery is done with requests for admissions and interrogatories but depositions may be taken. When the matter comes before the TTAB judges’ panel, it is usually just attorneys that argue the record of evidence obtained through discovery. TTAB proceedings may take a couple years.
When the opposition window has closed, and not opposition or extension to oppose has been filed, the client can rest much easier. This is a positive milestone to reach in the trademark registration process.
#5: Registration
Assuming no opposition is filed, the trademark (if filed as an in-use application) will register about three months later. If the trademark was filed as an intent-to-use application, then instead of a registration grant, the trademark application is allowed. This means the trademark registration will be guaranteed provided the trademark applicant timely submits evidence of use of the trademark in commerce. There is a six month deadline to submit this evidence but it can be extended for up to three years with extension fees.
Once registered, the federal trademark symbol can be used. Therefore, prior to registration, we would display SMITH & HOPEN™ while post registration we have the right to display SMITH & HOPEN®. Examples of two federal trademark certificates of registrations are shown below:
Federal registration confers a number of benefits including:
Federal trademark registrations must be renewed between the 5th and 6th year after registration although a 6-month grace period is available with a fee. The next renewal is between the 10th and 11th year from registration and then renewals occur every 10-years. Unlike a patent or copyright which has a finite lifetime, properly maintained trademark registrations may last indefinitely.
An important advantage of federal trademark registration is incontestability. Upon the first renewal, a Section 15 Affidavit of Incontestability can usually be filed which makes the trademark registration immune to all infringement defenses except:
The trademark has become generic
The mark has been abandoned
The trademark was fraudulently acquired
In conclusion, these six milestones to trademark registration take approximately one year. It is critical to clear and file a trademark candidate as soon as possible to secure the best possible ownership rights. If you have any questions on the trademark process, do not hesitate to contact us or even book a call online.
Law schools rarely teach the mechanics of drafting ethical and effective cease and desist letters. Most lawyers learn this craft from trial and error. Over 20+ years, we have learned what works and what fails when making a legal demand. Cease and desist letters can be categorized into three types:
The Furious Demand;
The Softball; and
The Intellectual.
The Furious Demand
The Furious Demand is all too common in intellectual property litigation. The undersigned attorney is seemingly outraged that the alleged infringer is still breathing. The Furious Demand is heavy on threats but light on facts. All infringement is egregious, knowing and malicious. The letter will invariably demand:
Attitude is everything in the Furious
Demand cease and desist letter
An immediate halt to all business operations involving the alleged infringement;
Immediate destruction of the allegedly offending articles or equipment in support of the infringement;
The identity of all customers that bought the infringing article;
The total number of infringing articles sold;
Advise of the profit margin for each article and the total profits made; and
An opportunity to admit infringement and grovel for a settlement.
The Furious Demand is adept at instilling fear in the mind of the layperson. The wrath of enormous penalties, much less the thought of a costly litigation often sends businesses into conniptions. More often than not, the Furious Demand is a smoke screen for a poorly investigated and/or weak theory of infringement. As Shakespeare would say, “methinks thou doest protest too much.” Such drum-beating is usually interpreted by well-informed patent litigators as the sign of inexperience or incompetence.
Pros and Cons of the Furious Demand
Pro
The alleged infringer may be sufficiently intimidated to stop the alleged infringement.
It takes very little time to draft – no real analysis exists in the Furious Demand.
The communication does serve as a call to action and will typically receive some form of response, whether positive or negative.
Con
The defendant may call the bluff and file for a declaratory judgment of non-infringement, effectively becoming the plaintiff in the venue of their preference.
The letter may support Rule 11 sanctions if the subsequent litigation is deemed frivolous, legally unreasonable, without factual foundation or asserted for an improper purpose.
The sender’s credibility is damaged and potential licensing discussions are far from an amicable start.
The tone of the letter can cast the patent owner in a negative light during trial.
The Softball Demand
The Softball Demand is almost the antithesis of the Furious Demand. Like the Furious Demand, the Softball Demand is light on facts. However, the Softball Demand is non-threatening and amicable. A typical Softball Demand might read as follows:
Dear Mr. Jones:We are intellectual property counsel for XYZ corporation. It has come to our attention that your ABC-brand widget has several features that appear to be claimed by our client’s patent (enclosed). Our client has advised us that XYZ corporation enjoys a long-standing reputation in the industry as a reputable and conscientious business. Thus, we presume XYZ corporation was unaware of the existence of our client’s patent. However, we believed it prudent for XYZ corporation to be aware of the patent as soon as we learned of this situation. From a preliminary review, we are inclined to believe the ABC-brand widget reads on the patent claims. However, we would appreciate your thoughts on this matter. Please feel free to contact us at your convenience, we look forward to hearing from you.Best regards…..
Sending a Softball Demand has its advantages, one of which is maintaining an amicable relationship with the opposing side.
The purpose of the Softball Demand is to put the opposing party on actual notice of the patent. From a damages standpoint, continued manufacture, use, sale, offering for sale or importing of the ABC-brand widget will now be knowing and willful. Also note that the word infringement was not used once in the communication. Instead, we simply noted that the ABC-brand widget might read on the claims of the patent (same thing as infringement).The idea is to not intimidate the opposing side.
Pros and Cons of the Softball Demand
Pro
The alleged infringer may be sufficiently intimidated to stop the alleged infringement.
It takes very little time to draft – no real analysis exists in the Furious Demand.
The communication does serve as a call to action and will typically receive some form of response, whether positive or negative.
Con
The defendant may call the bluff and file for a declaratory judgment of non-infringement, effectively becoming the plaintiff in the venue of their preference.
The letter may support Rule 11 sanctions if the subsequent litigation is deemed frivolous, legally unreasonable, without factual foundation or asserted for an improper purpose.
The sender’s credibility is damaged and potential licensing discussions are far from an amicable start.
The tone of the letter can cast the patent owner in a negative light during trial.
Some defendants become blissfully unaware that the Softball Demand letter they received was simply sent to enhance potential damages and not for any desire to maintain a friendly atmosphere. However, there is a fine line between notice and acquiescence. The letter must not convey any notion that the alleged infringement is permissible. Otherwise a legal theory called estoppel may severely cripple the patent owner’s case.
The Intellectual Demand
This type of demand requires the greatest amount of work, but generally produces the best results and is the default modality of Smith & Hopen attorneys. The Intellectual Demand represents a knowledgeable and even-handed manner of handling infringement issues. Where the Furious Demand is fanatical, the Intellectual Demand is reasonable. Where the Softball Demand dances around the real purpose of the communication, the Intellectual Demand is unambiguous. The Intellectual Demand has several features:
A claim chart is a two-column table in every legitimate patent infringement analysis. In the left column are each and every limitation of the patented invention. In the right column is either a “yes” or “no” answer as to whether that limitation is present in the accused device or method. For example, an accused device and a claim chart are presented below:
The accused device #1 (a bucket)
Patent Infringement Claim Chart
Claim Limitation
Present in Accused Device?
(Claim 1) A bucket for holding fluid, the bucket comprising:
a bucket
Yes
a handle from which said bucket depends; and
Yes
a cushioning means attached to said handle.
Yes
For infringement to exist, each and every limitation in the patent claim must be present in the accused device. Of course, a defendant may argue that the wooden handle in accused device #1 above does not have “cushioning” properties. Semantics and the use of precise language play a big part in patent quality and enforcement. Other aspects of this demand include:
Clear notice of infringement is present in the Intellectual Demand. The letter pulls no punches because the facts and analysis are laid out clearly.
Reasonable demands are made in the communication. Typically, they indicate that the accused product must be phased out and/or a reasonable royalty paid for those sold in the past and/or future.
An amicable tone carries through the Intellectual Demand. There is little need for bluffing or animosity when the facts are clearly on the side of the patent owner.
A reasonable time frame for investigation is given to the other side. The patent attorney for the accused infringer will order the “file wrapper” for the patent. The “file wrapper” or “prosecution history” are documents sent back and forth between the patent owner and the U.S. Patent & Trademark Office during the application stage. Quite often, the file wrapper will disclose concessions made by the patent applicant in order to get his or her patent. Such concessions may limit the scope or coverage of the patent. In the example above, the patent owner may have argued to the patent examiner that “cushioning means” was limited to resilient, elastomeric materials. Thus, the patent owner could not claim that a cushioning means made of wood (as shown in accused device #1) infringes on the patent since that was relinquished during the application stage. Such a narrowing of scope is called “prosecution history estoppel.” A true Intellectual Demand would have taken prosecution history estoppel into account. Nevertheless, the sender appreciates the need of opposing counsel to come to his or her own conclusion on the matter.
Following the right trademark strategies and best practices will help you secure the strongest trademark protection available. Many thousands of trademark registrations are granted that are void ab initio (invalid from the start). Even more trademarks contain unnecessary limitations that diminish the scope of their protection. We practice intellectual property law exclusively and have prosecuted thousands of trademark applications including appeals and contested proceedings. Here are a few key points to keep in mind.
1. Pick a strong mark
The best trademarks never describe the branded product. For example, GOOD BEER™ is a worthless brand. BEER is generic for the product and GOOD is merely laudatory. The USPTO will not allow your company to remove generic terms out of the public domain as privately owned trademarks.
On the opposite end of the spectrum, brands like SHOCK TOP®, ROLLING ROCK® and IRON HORSE® are “arbitrary.” They do not describe or suggest what the product is. Therefore, arbitrary (e.g., APPLE®) or coined (e.g., KODAK®, EXXON®) marks are the strongest.
We work with many branding experts who understand trademark strategies and investing in a unique brand will provide better protection down the road.
2. File early
One of the key advantages of federal registration is getting national constructive use. What does this mean? It means that when we file a federal trademark application it is the legal equivalent of selling your product or service in all 50 states. This strategy is true with either an in-use trademark application or an intent-to-use (ITU) application.
3. Use a legal entity
Never file an application as an invididual. Always use an LLC or corporation entity. This is particularly true for ITU applications which cannot be transferred as a separate asset until they have been converted to an in-use application. However, they can be transferred with the LLC or corporation as a whole.
Be absolutely certain your company is in good standing with the Florida Division of Corporations before you file and when you renew. Otherwise, the declaration you just signed is void and your registration is either invalid or abandoned.
4. Words only
A important tip for a good trademark strategy is what to register. Logos tend to evolve but the words in a trademark generally stay the same. File a “standard character claim” which is represented in all caps. This permits the registration to cover any font, stylization or in combination with logos and graphic elements.
5. Logos should stand on their own
Logos like the Mercedes Benz star or the Pepsi semi-circles stand on their own. Do not file them with words. Less is more in trademark filing strategy. Logos are generally filed as “stat” images which are pure black and white. No color or shading. This gives the registration the broader scope to cover the logo in any color scheme or shading.
These five trademark strategies are just a start to developing a comprehensive brand strategy. As you invest more in your reputation, your trademark gains value and should be protected with the highest level of expertise. Contact us for more information.
Currently, it takes around 9 months to receive a federal trademark registration. The U.S. Patent and Trademark Office, however, provides up-to-date quarterly statistic on the duration of trademark applications.
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
While it is possible to trademark a last name/surname, you cannot secure a federal registration on the principle register for a trademark that is primarily merely a surname. You can secure a trademark registration for a surname that has acquired distinctiveness or a surname that is not primarily merely a surname. In addition, you can register a trademark that is primarily merely a surname on the supplemental register.
Contact us today to determine if your trademark is primarily merely a surname and if you can secure a federal trademark registration. Alternatively, you may prefer to trademark your first name.
A trademark office action is a formal communication from the U.S. Patent and Trademark Office. The office action identifies the legal status of your trademark application. The office action will also identify any issues with your application and designate the period in which you must reply to office action to prevent your application from going abandoned.
You may require assistance from an experienced trademark attorney to overcome the issues identified in the office action. In the last 20 years, Smith & Hopen has helped trademark owners overcome every possible reason for refusal. Contact us today for a free consultation.
The difference between a service mark and a trademark is a matter of semantics. A service mark is a trademark. However, the term “service mark” is used to refer to trademarks for services. The term “trademark” is often used in a broader sense to describe marks used in connection with goods and/or services.
Regardless of whether you are offering goods or services in connection with your trademark, the experienced attorneys of Smith & Hopen can advise you on all things trademark. Contact us for additional information or a free consultation.
A trademark is any distinctive words, designs, logos, and slogans used to identify the origin of a good or service. In some cases, even a particular color, sound, and scent can be trademarked if a certain degree of consumer recognition has been achieved. A trademark is sometimes referred to as a “brand name.”
A trademark can be registered with the U.S. Patent and Trademark Office to secure nationwide trademark rights. These nationwide trademark rights prevent others from offering for sale similar goods or services under a similar trademark. Trademark rights, however, will not prevent others from offering for sale similar good or services under a clearly dissimilar trademark. You should consult an experienced trademark attorney to determine if your trademark is available for registration with the U.S. Patent and Trademark Office.
You can trademark your first name. The main purpose of a trademark is to identify a source of goods and/or services. Should you choose, you can use your first name to identify the source of your goods or services.
However, your trademark application could still be denied if it is confusingly similar to a preexisting trademark application or registration. You should consult with a trademark attorney to determine whether your name is available for trademark registration.
If you need assistance, please contact us today to speak with one of our experienced trademark attorneys.
Yes, you can trademark a color, but it is challenging and you must prove it has acquired secondary meaning. It cannot be “functional” with respect to the product (e.g., bright orange traffic cones). Some examples include brown for UPS trucks, pink fiberglass for Owens Corning insulation and orange scissor handles.
A UPS delivery truck in Fort Collins. United Parcel Service was founded in Seattle in 1907 and delivers over 15 million packages a day.
New guidelines provide a path to obtain trademarks for Cannabis and CBD Products but the restrictions are limiting for most applications. As of May 3, 2019, over 600 pending trademark applications were in limbo while the U.S. Patent & Trademark Office (USPTO) issued refusals on otherwise registrable trademarks because they claimed cannibis or cannabis-derived goods such as cannabidiol (CBD). The basis for the refusals stemmed from the requirement that the trademark use must be legal.
However, under the Controlled Substances Act (CSA), marijuana is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16). Cannabidiol (CBD) is a chemical constituent of the cannabis plant that is encompassed within the CSA’s definition of marijuana.
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a). Therefore, the USPTO refuses registration when an application identifies goods encompassing CBD or other extracts of marijuana because such goods are unlawful under federal law and do not support valid use of the applied-for mark in commerce.
The 2018 Farm Bill Exception
The 2018 Farm Bill, which was signed into law on December 20, 2018, amends the Agricultural Marketing Act of 1946 (AMA) and changes certain federal authorities relating to the production and marketing of “hemp,” defined as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” Section 297A. These changes include removing “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA.
What Products are Available to Trademark?
Because the 2018 Farm Bill became law on December 20, 2018, trademark applicants that filed on or after that date could have had a legal bona-fide intent to use cannibis or CBD in commerce provided they are derived from hemp and contain less than 0.3% THC. However, there are more restrictions. Cannabis compounds are undergoing clinical investigations and therefore under the FDA’s oversight. Registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the Federal Food Drug and Cosmetic Act (FDCA), even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce. Unfortunately, everything that entreprenuerial companies want to do with CBD (introduction into the body for theurapuetic benefit) appears unavailable for trademark protection.
What Services are Available to Trademark?
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. Therefore, the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because such services still violate federal law, regardless of the application filing date. So, the alternative is cultivation of hemp.
Production of Hemp Requries License or Authorization
For applications that recite services involving the cultivation or production of cannabis that is “hemp” within the meaning of the 2018 Farm Bill, the examining attorney will also issue inquiries concerning the applicant’s authorization to produce hemp. Applicants will be required to provide additional statements for the record to confirm that their activities meet the requirements of the 2018 Farm Bill with respect to the production of hemp.
Conclusion
While the guidelines provide much-needed instruction to USPTO trademark examining attorneys, the restrictions on cannabis and CBD products is relatively severe. Much of the interest and commercial value of cannabis and CBD come from its therapeutic effect by internal administration in the body. USPTO guidelines note this violates the Federal Food Drug and Cosmetic Act (FDCA). Furthermore, the THC levels must be below 0.3% under the Controlled Substances Act which further limits the availability of trademark protection for therapeutic compounds using THC as an active ingredient. We anticipate strong legislative pressure under the current Congress to moderate the restrictions under the CSA and FDCA to enabled at least limited federal authorization of cannabis and CBD including internal administration into the body. Trademark protection serves the public interest by insuring consistency and origin of products. With the rapid legalization of cannabis products on a state-wide level, federal legislators should start feeling some pressure to align federal law with state.
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