The Rate of Invention is Staggering

I just received my 150th issued US patent.

That kind of landmark tends to trigger a look back.

My first patent was number 6,756,879 and my 150th was patent number 9,166,974 -- meaning 2.41 million patents issued between my first and my 150th. To get a sense of the accelerated rate of innovation in recent years, it is worth pointing out that more than 25% of all US patents ever issued have issued in the mere 11 years that passed since my first one issued in 2004.

TPP Intellectual Property Chapter Leaked

Wikileaks has released the intellectual property chapter of the current draft of the Trans-Pacific Partnership agreement.

This agreement addresses how member nations deal with trademarks, copyrights, utility patents, plant patents, drug and medical patents and drug approval, and trade secrets.  I'm sure in the coming days we'll see a lot of analysis as to how these changes will impact IP law.

Can you patent an invention just to prevent the world from using it?

Eric Goldman blogged about a case where a person purchased a copyright to an unflattering photograph of himself with the intention of using copyright law to make the photograph disappear from the internet.  Eric writes "Due to the decisive appellate ruling and the district court’s stinging rebuke and fee-shift, the results of this lawsuit should deter other people from buying up copyrights to manufacture a right to forget."

Copyright law is different from patent law in one critical respect:  There is no (normally) no First Amendment right to practice an invention, whereas there is a First Amendment right to publish specific expressions of ideas, even verbatim, for certain purposes.   As a result, the Copyright Act provides a four factor test (nature of use, nature of work, amount of work copied, marketplace impact) that functionally creates an exception large enough that copyright law and First Amendment law can co-exist.

The other part of the case that Eric blogged about is the implied public policy issue.  Eric writes that "copyright law principally serves as an economic policy by protecting creators' ability to recoup the investments they make in generating new works that have value to society."  I agree with Eric's implication that what made this an easy case to decide was that the copyright holder was using copyright law to censor, rather than enhance, the body of work available to the world.

Put another way, the basis of all copyright and patent law is found in Article 1, Section 8, Clause 8 of the Constitution and grants legislative power to Congress as as follows:  "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries".

So there it is.  I suspect that a constitutional argument, rather than a statutory one, would also have prevailed against an effort to bury content using copyright law -- burying content does not "promote the Progress of Science and useful Arts".  This is an even more powerful constitutional argument when the First Amendment is considered.

The argument is significantly weaker when it comes to patent law, because preventing use of a technology under patent law can be used to promote technological progress.  For example, if I held a patent that covered varying internet connection speed based on the sender, I could insist on net neutrality simply by seeking injunctions against anybody who favored some senders over others.  Of course, this is made all the more complex by the Supreme Court's decision to make injunctive relief harder to obtain in patent cases.  Nonetheless, I suspect that at some point, courts will face the question of whether it is unconstitutional (or patent misuse) to use a patent, with no economic benefit to the patent holder, to simply prevent a disliked technology from being used at all.

"Poor man's patent" and "Poor man's copyright": The Tooth Fairies of the IP World

There is a common misconception that an inventor or author can protect their intellectual property by mailing a copy of it to themselves.  These are sometimes called a "Poor Man's Patent" or "Poor Man's Copyright".  I will address each in turn (note:  IP law varies greatly from country to country; I am writing only about the United States).

Poor Man's Patent:

What is a "Poor Man's Patent"?  As an ehow.com article describes it, "a poor man's patent is simply, just a postcard you send through the United [States] Postal Service.  Just print a copy of the product you designed on it.  Address the postcard to your self [sic].  Once it comes back stamped by the postal service it is a 'Poor Man's Patent.'"  The article takes it one step further, suggesting that a "better way to get a patent is to go to Lulu.com.  Download a picture of your product.  Then make a calendar, T-shirt, coffee mug whatever they offer.  You design what [it] is you want and printed on it copyrighted by your name and date. You pay for it. Then Lulu.com sends your design on the product you chose, this is a legitimate patent plus it is copyrighted and no one else can steal it."  Do not under any circumstances attempt to "patent" something this way.  It doesn't work.  The Chicago Tribune nailed it in a 1985 article:  a "poor man's patent [is a] term most appropriate in the sense that the inventor who relies on such protection is virtually assured of remaining a poor man."

To understand why this approach is totally ineffective, we must first understand what a patent is.  A patent is not the right to do anything.  If I had a patent on a better way to break into bank safes, I would not then have the right to break into bank safes.  Instead, a patent is the right to exclude others from practicing a patented invention, and to obtain damages in court if somebody does practice a patented invention without permission.  

These rights only arise in the US once specific claims are issued by the US patent and trademark office.  Before the 2011 America Invents Act, the United States awarded patents to the first person to invent, even if somebody else beat them to the patent office.  Under this old regime, there was a tiny benefit to mailing an invention disclosure to yourself -- it helped established an invention date.  Even this benefit is now gone, as the America Invents Act changed US patent law so that the patent is awarded to the first inventor to file for a patent, regardless of who invented first (with lots of caveats, see a lawyer for details). 

In fact, even hiring a patent lawyer and filing a patent application is not a patent (a "rich man's" patent?).  The only way an invention is protected under the patent system is by making it through the patent process successfully (and thanks to the America Invents Act, surviving the likely post-grant administrative challenges).

Somebody using the (ineffective) "poor man's patent" approach may also be attempting to allow themselves to continue to practice an invention even if somebody else later invents and patents it (old rules) or later files for and gets a patent (new rules).  If somebody doesn't mind making their invention public and possibly preventing themselves from ever getting a patent on it, the most effective way to do this is to publish a thorough description of what they are doing in a public forum.  This would then constitute "prior art" and prevent issuance of a valid patent covering that technology (patent office error could result in issuance of  a patent, but it wouldn't be valid over prior art if done right).  This also triggers real threats to the inventor's later attempts to get a patent ("on sale" bar for example), and should not be done lightly.

The bottom line is that there are really three patent issues the "Poor Man's Patent" raises, two of them highly related:

(1) Can I legally prevent somebody from doing what I invented?

Answer:  Only by getting an issued patent.  There is no shortcut -- although if you keep it as a trade secret there may be some benefit, but that's really something that a lawyer needs to advise on.

(2) Can I keep doing what I'm doing?

Answer:  This is a freedom to operate question, and even the best patent lawyers in the world can only get to "pretty sure" on this one in most cases.  There are millions of valid patents globally, and attempting to answer the question without a strong legal team is just asking for patent litigation.

(3) Can I stop somebody else from getting a patent on what I'm doing?

Answer:  If you publish your invention in a public forum, it is usually going to serve as prior art and prevent issuance of a valid patent -- with some wrinkles that a patent lawyer should expand on if you're really contemplating this.

An inventor who is cash poor does have an option:  There is a "poor man's patent application" -- the provisional patent application.  It can be filed with or without a lawyer, and costs $65, $130, OR $260 (depending on entity status - microentity, small entity, or large entity, excluding attorneys fees).  This application will never mature into an issued patent without filing a proper utility patent application within a certain time frame (a year usually, although it can be shorter in some circumstances, such as when claiming priority to multiple provisionals).  Note that the rules for patents other than "utility patents" differ.

There is some dispute in the patent community as to whether simply filing source code as a provisional patent application is beneficial -- my opinion is that there are some cases where it may be appropriate.  Let's be clear, though:  Saving money on a patent application up front strongly reduces the chance of getting a valid and valuable patent at the end.  This is particularly so given the changes happening in patent law.  A provisional patent application protects only the content of the application, and if you leave something out, that can be a problem later.

While some materials, like the ehow article referenced above, are clearly and obviously wrong in some material ways, even well researched materials -- even recent court cases -- can become wrong or misleading very quickly.  Any reference materials more than a few months old should be assumed invalid as to at least some points.  The law is changing that rapidly (a big case came down last week from the Federal Circuit on a 6/5 vote about whether delay in enforcing rights waives patent damages).  The speed of change is such that relying on anything other than a lawyer (or, if you can't afford one, at least careful reading of current USPTO materials) is likely to lead to mistakes.

One advantage of Fresno I've found as an inventor is that there is at least one excellent patent lawyer (the one I use), and I suspect there are others.  Moving my patent work from two large LA law firms to her in Fresno has resulted in large cost savings (Fresno is simply a better priced legal market) and there has been no compromise on the quality of the work.

Given the pitfalls of going it alone on patents and the more than competitive rates we can get in Fresno, it is my strong opinion that using a licensed patent lawyer (or patent agent -- though I don't know if we have any in Fresno) is critical to any invention-driven startup.

Side note:  Ironically, what would have provided at least some benefit, compared to the "why would people think this is effective at all" self-mailing method, would have been to sign an NDA with a witness or notary public, have them sign and witness the actual document, then seal it or not, who cares.  This would have established an invention date with proof of invention, which under the old "first to invent" regime would have given the inventor priority over an earlier-filed but later-invented invention assuming the inventor timely files for a patent.  Under the new first to file regime, this wouldn't work.

The bottom line is that patents are expensive.  Using a lawyer local to Fresno makes them far less expensive, but patents are still not cheap to acquire.  There is simply no way to get patent protection in the US without going through the patent office.  Anybody who tells you otherwise is wrong.  The real alternative to a patent is treating the invention as a trade secret, but that comes with its own set of risks and benefits and should not be done without the advice of counsel.

The Poor Man's Copyright:

A related myth to watch out for is people "copyrighting" things by putting them in an envelope and mailing it to themselves.  It may provide proof of date, but that is easier to do by just getting a notary public, and far more likely to be legally accepted as proof.  Moreover, things are copyrighted as soon as they are created in fixed and tangible form.  You don't need to do anything to get a copyright in your work.  The doodle you drew while talking with your friend yesterday was copyrighted as soon as you drew it.

There are three levels of copyright protection in the U.S. (the first two levels differ only in terms of how the creator documents the creation date, so they differ in functional but not legal terms):

(1) You create a work, and it is automatically copyrighted with nothing further required on your part;

(2) A work you created and which you documented in a way that allows you to prove date of creation (thereby helping you to win a case if somebody copies your work and later claims that it was you who copied their work); and

(3) A registered copyright.

People don't understand the difference between copyright and a registered copyright.  A registered copyright comes with the right to statutory damages and attorneys fees.  Registration is cheap and easy, but is done with the US Copyright Office.  

Just like with patents, writing something down and putting it in an envelope to "copyright" it is effective as a way of wasting a stamp and little more.  Proof of creation date is far better established in other ways, and in any event is a poor second to actually registering the work.  Unlike patents, most copyright registrations can be done equally well by a non-lawyer as by a lawyer, although for mission critical things like a novel, at least running it past a lawyer isn't a bad idea.

What about money?

There is a complex relationship between intellectual property protection and money.

Many venture capital sources and angel investors will not invest without some kind of assurance or plan to reduce the risk that a big company will see what you are doing, swoop into your space, and use their money and market dominance to take your business.

Copyright is free and automatic (and registration costs a de minimis amount), but in most cases it would be a trivial task for one of the tech giants to write software from scratch providing the same functionality as yours does.  By contrast, a patent protects functionality.

Let's take a look at a startup from 1998 -- Google.  In 1998 when Google landed an initial $100,000 angel investment, it was patent pending on application 09/004,827, "Method for node ranking in a linked database" -- their basic search algorithm.  On June 7, 1999, Google landed $25 million in equity investment -- two months before their patent application's August 26, 1999 first office action, a non-final rejection by the patent office.  In a very typical history for patent applications, the rejection was eventually overcome and the patent was allowed on April 23, 2001 and issued on August 16, 2001.

The bottom line for Google is that they paid for a provisional patent application (filed Jan. 10, 1997) and a utility patent application (filed January 9, 1998) before they landed any substantial investment.  Google was able to say they were "patent pending", and investors were able to evaluate the patent application and gain a measure of confidence that the then-competing search giants (e.g. Yahoo, DEC's Alta Vista) would not eat Google's lunch by stealing their algorithm.  While the actual role of the patent application in Google's funding is something we can speculate about, the fact is that they followed a solid path to getting funding:  Take steps to protect your intellectual property first, then seeking funding.

At this point, many potential start-ups may be thinking the obvious:  "If I need money to pay for a patent application and I need a patent application to get money, what do I do?"  There are several pathways that can be followed.  A provisional patent application protects the filing date and can be created for $5,000 or less (around $100 if you do it yourself without a lawyer -- something I don't recommend).  A bare bones utility application would cost around the same.  It is definitely worth talking with a patent lawyer to get options and estimates (as well as advice as to how to approach family and friends for the initial $10,000 to protect the IP without putting the IP at risk in discussing it before filing).

There are a few additional options.  One is to find investors who are willing to invest before IP protection has been obtained.  Matt Nutting has identified several classes of angel investors who are willing to invest for reasons other than pure financial motives.  Those investors are excellent candidates for investment in a company pre-patent filing.

You can also utilize local resources to get fundraising advice.  In the Central Valley and Fresno, you can get free help finding financing by going through the Fresno State Small Business Development Center (SBDC).

Multi Time Machine, Inc. v. Amazon.com

In the recent case of Multi Time Machine, Inc. v. Amazon.com, the 9^th Circuit Court of Appeal reversed the District Court’s summary judgment in favor of online retailer Amazon.com (“Amazon”) in a trademark infringement action brought by Multi Time Machine, Inc. (“MTM”) under the Lanham Act.  The Court held that a jury could find that Amazon had created a likelihood of confusion under an “initial interest confusion” theory by responding to search requests for MTM Special Ops watches by showing MTM’s trademark three times above the search results, and displaying similar watches manufactured by MTM’s competitors beneath. 

Facts:

MTM manufactures, among other things, high-end, military-style “MTM Special Ops” watches, and owns a registered trademark for “MTM SPECIAL OPS.”  Amazon.com, who claims to offer the “Earth’s Biggest Selection of products,” does not carry MTM watches.  

In its complaint, MTM alleged that Amazon infringed its trademark by responding to search requests on its website with a results page displaying the “MTM SPECIAL OPS” trademark three times, above a display of aesthetically and functionally similar watches manufactured by MTM competitors.  Customers could not purchase watches from the search results page, but had to click through to an Amazon “product detail” page.  On the top of the product detail page, the customer’s initial query “MTM Special Ops” still appeared in the search field.  Nothing on either of the pages indicated that Amazon does not carry MTM products.  However, the search results of the Amazon website produces a list, with photographs, of several other brands of military-style watches that Amazon does carry, specifically identified by their brand names. 

On Amazon’s motion, the District Court granted summary judgement in favor of Amazon finding that the competitor’s itemized products were clearly labeled and there was no evidence that Amazon users were likely to be confused as to the sources of the competing goods. 

9^th Circuit Analysis:

Trademark infringement occurs when a defendant uses a mark in commerce in a manner likely to cause confusion as to the source of goods or services.  A defendant can create a likelihood of confusion, and thereby cause infringement, through a type of confusion referred to as “initial interest confusion.”  Initial interest confusion occurs where a consumer is confused, not at the time of purchase, but earlier in the shopping process, if the customer confusion creates initial interest in a competitor’s product. 

The 9^th Circuit held that a jury could find that Amazon had created a likelihood of confusion under the initial interest confusion theory because users may be confused as to why they only received search results showing the competitor’s products, and may wonder whether a competitor has acquired MTM or is otherwise affiliated with or approved by MTM.  The issue is not whether a buyer may purchase some brand other than MTM (mere diversion is not enough) but, instead, whether Amazon’s use of the MTM mark would cause initial interest confusion by attracting potential customers’ attention to buy infringing goods because of MTM’s hard-won reputation.  “Even though his confusion may be dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.’” 

Conclusion:

While the 9^th Circuit clearly states that it is “by no means certain that MTM will be able to prove likelihood of confusion under and initial interest theory,” there are genuine issues of material fact.  Consequently, the Court reversed the judgment of the District Court, and remanded the action to the District Court for further proceedings.

This Blogger’s Reflections: 

In some respects, the 9^th Circuit appears to be stretching the bounds of what constitutes actionable infringement by finding a genuine issue of fact regarding the likelihood of confusion when none appears to exist because MTM’s competitor’s products were clearly labeled.  It seems highly unlikely to this trademark attorney that sophisticated consumers, making relatively expensive purchases, would be confused as to the source of the competitor’s watches.  If the consumer had doubts as to the source, the sophisticated consumer would investigate further as to MTM’s status and affiliations, or at minimum, search other sites for MTM watches. 

On the other hand, and in contrast to Amazon’s competitor’s Buy.com and Overstock.com who both clearly state that no search results match “MTM Special Ops,” Amazon makes no clear representation, which caused the 9^th Circuit to  focus on Amazon’s intent.  Because it appears that Amazon is attempting to capitalize on the goodwill associated with MTM’s trademark, to the detriment of MTM and, perhaps, Amazon’s competitors,  the end result reached by the 9^th Circuit (that the action against Amazo proceeds) may be the fair result.  In any case, MTM will no doubt have a difficult road ahead in attempting to prove consumer confusion with their competitor's products clearly labeled as such.    

Trademark Terminology – What Trademark Owners Need to Understand to Talk With a Trademark Attorney

Since my astute colleague, Gary Shuster, posted helpful terminology related to patent “speak,” I thought it might be helpful to have a similar glossary of terms for trademark terminology.  Although trademark law tends to be less complex than patent law, without a fundamental understanding of the terms trademark lawyers use, it is easy to get lost in a conversation with a trademark attorney. 

The following glossary of trademark terms is fundamental to an understanding of trademark law, and in any case, you can impress your trademark attorney with your grasp of trademark terms and concepts. As with the patent glossary, this glossary may also grow over time. 

Abandonment:   A trademark or service mark application that has been declared abandoned is “dead” and no longer pending.  The most common reason for abandonment of a trademark or service mark application is when the U.S. Patent and Trademark Office (“USTPO”) does not receive a response to an Office Action (see definition below) from the applicant within 6 months from the date the Office Action was mailed. 

Acceptable Identification of Goods and Services Manual:  This manual lists numerous examples of identification of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations. 

Acquired Distinctiveness:   See Secondary Meaning. 

Allegation of Use:  A sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. The allegation of use must include one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee.

Amendment to Allege Use:  An Allegation of Use filed before the Examining Attorney (see below) approves the mark for publication and prior to issuance of the trademark registration.  The Amendment to Allege Use and the Statement of Use (see below) include the same information, and differ only as to the time when filed.

Application (Trademark):  A document by which a person requests a federal trademark registration. To receive a filing date, an application must include (1) the applicant's name, (2) a name and address for correspondence, (3) a clear drawing of the mark sought to be registered, (4) a list of the goods or services, and (5) the application filing fee.

Assignment:  A transfer of ownership of a trademark application or trademark registration from one entity to another.

Cancellation Proceeding:  A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark.

Certificate of Registration:  Official document from the USPTO evidencing that a mark has been registered.

Classification of Goods and Services:  Goods and Services are classified by an international system, according to international treaties to which the United States is a signatory. All goods and services included in trademark applications are classified by the Office according to this system.  Goods are classified in International Classes (IC) 001 through 034, and services are classified in IC 035-045. 

Common Law Rights:  Property or other legal rights that do not absolutely require formal registration in order to enforce them.  Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual.  Active Federal registration of trademark can provide a higher degree of legal protection and readily-demonstrated evidence of ownership of a mark.

Dead:  A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.

Declaration of Incontestability:  See Section 15 below. 

Descriptive Mark:  A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

Disclaimer:   A statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone.

Examining Attorney:  A USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark.

Expired Trademark:  Trademark registration is no longer active. The registrant failed to renew the trademark registration at the end of the registration period.

Fanciful Marks:   Terms that have been invented for the sole purpose of functioning as a trademark or service mark.  Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).

Filing Basis:  The legal basis for filing an application for registration of a mark. The Trademark Act sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved for publication for opposition or registration on the Supplemental Register (see below).  The five bases are: (1) use of a mark in commerce under §1(a) of the Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) registration of a mark in the applicant’s country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States, under §66(a) of the Act and the Madrid Protocol.

Generic Terms:  Terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register (see below) under 2(f) or on the Supplemental Register (see below). Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.

Goods:  Goods are products. 

Identification of Goods and/or Services:  A written statement of the goods and/or services included in an application. Every application must include an identification of goods and/or services.

Intent to Use (ITU):  Refers to the intent-to-use filing basis provided for in Trademark Act Section 1(b), 15 U.S.C. 1051(b). Applicants who have not yet used the mark they wish to register may file a trademark application under this filing basis.  An "intent to use" application must include a sworn statement (usually in the form of a declaration) that applicants have a bona fide intention to use the mark in commerce.

International Class (IC):  See Classification of Goods and Services above.

Likelihood of Confusion:  A statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d)), for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO. After an application is filed, the assigned Examining Attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application. To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

Notice of Allowance (NOA):  A written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette (see below), and has consequently been allowed for registration. It does not mean that the mark has registered yet.

Notice of Publication:  A written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette (see below).  If the Examining Attorney raises no objections to registration, or if the applicant overcomes all objections, the Examining Attorney will approve the mark for publication. The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

Office Action:  A letter from a trademark examining attorney setting forth the legal status of a trademark application. There are several types of Office actions: examiner’s amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters.

Official Gazette:  A weekly publication of the USPTO that includes regular and special notices of the Office.

Opposition Proceeding:  a proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. An opposition may only be filed in response to the publication of the mark in the Official Gazette.

Principal Register:   Primary trademark register of the USPTO. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act.  For a listing of the advantages of owning a registration on the Principal Register see “Registration” below.

Publication for Opposition:  If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

Registration:  Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark. Although federal registration of trademarks is not required to use a trademark, owning a federal trademark registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, the ability to bring an action concerning the mark in federal court, the use of the U.S. registration as a basis to obtain registration in foreign countries, and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Request for Extension of Time to File a Statement of Use:  A sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce.  A filing fee per class of goods/services must accompany the Extension Request.

Section 8 Declaration of Continued Use:  A sworn statement, filed by the owner of a registration that the mark is in use in commerce.  It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods:  (1) At the end of the 6th year after the date of registration, and (2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Section 9 Renewal Application:  A sworn document, filed by the owner of a registration, to avoid the expiration of a registration.  Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods.  Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.  Trademark owners have a total of 18 months to file a §9 Renewal Application. The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.

Section 15 Declaration of Incontestability:  A sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified.  An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services.  Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration.  The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Service Mark:  A word, name, symbol or device that is used to indicate the source of the services and to distinguish them from the services of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are often used to refer to both trademarks and service marks.

Secondary Meaning (aka Acquired Distinctiveness):   A doctrine of trademark law that provides that trademark protection is afforded to the user of an otherwise unprotectable mark when the mark, through advertising or other exposure, has come to signify that a product or service comes from a single source.

Specimen:  A real-world example of how the mark is actually used on goods or in the offer of services.  Labels, tags, or containers for goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures.  One specimen is required for each class of goods or services specified in the trademark application.

Statement of Use (SOU):  An Allegation of Use filed after issuance of the Notice of Allowance.  The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when filed.

Stylized Mark:  One type of depiction of the mark sought to be registered. Another name for this type of mark is “special form.” If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. Therefore, applicants must select the "stylized or special form" mark format when applying for these types of marks.  The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

Standard Character Format:  An applicant may submit a standard character format representation of a mark if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does not include a design element.

Suggestive Mark:  A mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services.  Suggestive words are acceptable for registration (e.g. “Nutrasweet” for artificial sugar).   

Trademark:  A word, name, symbol or device that is used to indicate the source of goods and to distinguish them from the goods of others.

Trademark Act:  Title 15 of the United States Code (USC).  The major body of U.S. law that governs federal registration of trademarks.

Trademark Electronic Application System (TEAS):  USPTO's electronic filing system.

Trademark Electronic Search System (TESS):  USPTO’s online database for searching pending, 

registered and dead federal trademarks.  TESS is free and intended for use by the general public.

Trademark Manual of Examining Procedure (TMEP):  A reference work on the practices and procedures relative to registration of marks in the USPTO.  It contains guidelines for USPTO examining attorneys, trademark applicants and owners, and attorneys and representatives for trademark applicants and owners.

Use in Commerce:   For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

Word Mark:  A type of trademark or service mark comprised of text.