Copyright Registrations and Copyright Protections

Copyright Registrations

What are Copyright Registrations?

Copyright Registrations are defined in Title 17 of the United States Code (U.S.C). In part, 17 U.S.C. 102 reads:

“(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device….

 

Works of authorship include the following categories:

      • literary works
      • musical works, including any accompanying words
      • dramatic works, including any accompanying music
      • pantomimes and choreographic works
      • pictorial, graphic, and sculptural works
      • motion pictures and other audiovisual works
      • sound recordings
      • architectural works”

A Competitor Published our Copyright – What can We do?

Our advertising manager had lunch with a competitor’s public relations manager. Unfortunately, over lunch, our advertising manager discussed the focus of our advertising campaign. He also discussed our new audiovisual commercial for our third most profitable product line. Before we could publish our new commercial, our competitor launched its own commercial. Their commercial included every focus point from our advertising campaign.

According to our accounting estimates, their use of our ideas reduced our sales by $500K. Can we sue our Competitor for Copyright Infringement?

The answer is… it depends.

What is Required to Prove Copyright Infringement?

Among other things, a Copyright Registration requires, a work “…of authorship fixed in any tangible medium of expression…”

  • If your company had filed an Application for Copyright Registration, prior to the advertising manager’s disclosure to the public relations manager, then Yes, you can probably prove copyright infringement. (The work of authorship was fixed in a tangible medium of expression.)
  • If your company can provide a written document, audio recording or audiovisual recording of what the advertising manager disclosed to the public relations manager then Yes. It may be worthwhile to pursue a claim of copyright infringement, since “the work of authorship was fixed in a tangible medium of expression.”
  • If your company relies only on oral testimony of the advertising manager to prove existence of a Copyright then No. The likelihood of a successful suit is very low since the focus concept was an idea and not “a work of authorship fixed in a tangible medium of expression.”

Advantages of Copyright Registrations

  • Evidence of ownership of the registered work of authorship
  • Public notice of ownership of the work
  • Federal District Court jurisdiction for an infringement suit
  • Possibility of statutory damages and attorneys’ fees

If your enterprise needs legal assistance procuring, managing and enforcing your Copyrights, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Opposition to a Trademark

Opposition Proceedings

What is a USPTO Opposition Proceeding?

Another Company filed a Trademark Application in the United States Patent & Trademark Office that is almost identical to our Trademark.  What can we do?  Can we institute an Opposition?

In view of such facts, your company has at least the following options:

  • Do nothing
  • Purchase the troublesome Trademark
  • Send a Cease and Desist Letter
  • If your company owns a federal Registration, institute a federal Trademark infringement legal action in the appropriate jurisdiction and venue
  • Possibly – institute a False Designation of Origin legal action in the appropriate federal jurisdiction and venue
  • Initiate a trademark infringement proceeding in a state court under the appropriate state statute or at common law
  • Initiate a legal proceeding before the USPTO’s Trademark Trial and Appeal Board

Which option is more cost-beneficial for your company? That is management’s decision.  As a general rule, the legal costs of an Opposition Proceeding are much less than the legal costs of a federal or state law infringement case.

15 U.S.C. 1063, in part, reads:

Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered….”

Any person who believes he/she/it could be damaged by the registration of the Mark on the Principal Register of the United States can institute an Opposition Proceeding before the USPTO’s Trademark Trial and Appeal.  If the Opposer successfully proves the case, the Trademark Application will not mature into a federal Registration.

Oppositions are generally less costly to litigate than cases in the federal or state courts.  Like cases in the federal courts, the Federal Rules of Evidence and the Federal Rules of Civil Procedure apply to an Opposition Proceeding.

Oppositions can be conducted with or without oral hearings before the Trademark Trial and Appeal Board (TTAB).

Successful Opposition Proceedings

For an Opposer (plaintiff) to be successful before the TTAB, they must prove one or more of the following:

  • (1) Defendant’s [the owner of the mark] mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.
  • (2) Defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them.
  • (3) Defendant’s mark is geographically deceptive, that defendant’s mark consists of or comprises immoral, deceptive, or scandalous matter, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity, or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.
  • (4) There was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), for a Trademark Act § 1(b) application, within the expiration of the time for filing a statement of use.
  • (5) Defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b).
  • (6) Defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
  • (7) The term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.
  • (8) Defendant’s mark has been abandoned due to nonuse with intent not to resume use.
  • (9) Defendant’s mark is the title of a single creative work and not considered a trademark.
  • (10) That Defendant’s mark is generic.

If your enterprise needs legal assistance procuring/managing/enforcing your Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Microorganisms Patented

What is Patentable: From Microorganisms to Abstract Ideas

What Inventions are Patentable?

35 United States Code (U.S.C.) 101 provides the statutory basis for what inventions are patentable.

35 U.S.C. 101 reads, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Are Manmade Microorganism Patentable?

In the US Supreme Court case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Court held that 35 U.S.C. 101 did not prohibit a manmade microorganism from being patented.

On page 309 of Diamond, Mr. Chief Justice Burger wrote, “…when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.

Are Abstract Ideas Patentable?

1.) In this example, the question posed involves an invention explaining how buyers and sellers in the energy market protect or hedge against the risk of price changes to determine if it is patentable.

In the US Supreme Court case of Bilski v. Kappos, 561 U.S. 593 (2010) it was held that Bilski’s program was not patentable subject matter.

On Pages 611-612, Mr. Justice Kennedy wrote, “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.  Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

2. In this example, the question involves a computer-implemented scheme for mitigating “settlement risk” as a patentable abstract idea.

On Page 212 of the US Supreme Court Case of Alice Corp. Pty Ltd. v. CLS Bank International, 573 U.S. 208 (2014), Mr. Justice Thomas held:

“The patents at issue in this case disclose a computer-implemented scheme for mitigating “settlement risk”…only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Judicial Exceptions to Patentability

On page 216 of Alice Corp. Pty Ltd., the long standing judicial exemptions to patentability were reiterated.  The Court stated, “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”…We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

The judicial exceptions to patentabilty are:

    • Laws of nature
    • Natural phenomena
    • Abstract ideas

On page 217 of Alice Corp. Pty Ltd., Mr. Justice Thomas wrote:

“Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the ” ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more,…thereby “transform[ing]” them into a patent-eligible invention. The former “would risk disproportionately tying up the use of the underlying” ideas,and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.”

Based on Business Patent Law’s experience, if your company’s invention(s) are chemical, electrical, electromechanical, mechanical, optical or pharmaceutical, only on rare occasions could the judicial exceptions to patentability potentially manifest.

If you need legal assistance with your company’s Patents or Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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Royalties and Taxes

Royalties and Taxation

What are Royalties?

In Revenue Ruling 81-178, 1981-2 C.B. regarding royalties, the Internal Revenue Service stated:

“To be a royalty, a payment must relate to the use of a valuable right. Payments for the use of trademarks, trade names, service marks, or copyrights, whether or not payment is based on the use made of such property, are ordinarily classified as royalties for federal tax purposes.”

Patents, Trademarks & Copyrights are Valuable

Patents, trademarks, and copyrights are valuable. Intellectual property portfolios of Patents, Trademarks and Copyrights are assets of your company and can provide a stream of royalty income for your company.

26 Code of Federal Regulations (CFR) 1.61-8 – Rents and Royalties

CFR 1.61-8, in part reads, “(a) In general. …Gross income includes royalties. Royalties may be received from books, stories, plays, copyrights, trademarks, formulas, patents, and from the exploitation of natural resources, such as coal, gas, oil, copper, or timber.

  • License agreements of Patents, Trademark and Copyrights are contracts that include royalty payments to the owner of the intellectual property.
  • License agreements can have long term benefits for both the licensor and the licensee.
  • Royalty agreements can be difficult to negotiate and understand.
  • It is wise for parties to license agreements to be represented by independent counsels.

Business Patent Law, PLLC does not practice taxation law. However, in view of US federal taxation laws, royalties are generally treated as passive ordinary income.

Under certain circumstances, transfers of Patent rights are treated as capital gains

26 Internal Review Code (IRC) 1235, in part, reads:

(a) General A transfer (other than by gift, inheritance, or devise) of property consisting of all substantial rights to a patent, or an undivided interest therein which includes a part of all such rights, by any holder shall be considered the sale or exchange of a capital asset held for more than 1 year, regardless of whether or not payments in consideration of such transfer are—

(1) payable periodically over a period generally coterminous with the transferee’s use of the patent, or

(2) contingent on the productivity, use, or disposition of the property transferred.

If you need legal assistance with your company’s license-royalty agreements or intellectual property matters, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

 

Precise Patent Claims

Patent Claims Must Be Written Precisely

Overcoming the Examiner’s Rejection

The Patent Examiner stated that our claims did not particularly point out and distinctly claim our invention. Can we overcome the Examiner’s rejection?

Whether Applicants can overcome the Examiner’s rejections of the claims, depends on the evidence.

35 U.S.C. 112, in part, reads:

(a)      In General:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b)      Conclusion:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

Be Precise

35 U.S.C. 112 requires Applicants’ claims to precisely claim the subject matter of the invention. When the Examiner argues that the Applicants’ claims failed to particularly point out and distinctly claim the subject matter the inventors regard as the invention, in effect, the Examiner argues that the claim language is unclear or uncertain.

An Unfixable Rejection

Example of an unfixable 35 U.S.C. 112(b) claim rejection: Applicants’ claimed subject matter is not disclosed and enabled in the Specification and Drawings. By way of illustration, Applicants claimed a chair with arms and the Application does not disclose a chair with arms.

A Potentially Fixable Rejection

Example of a potentially fixable 35 U.S.C. 112(b) claim rejection: Applicants used terminology in the claims not utilized in the Specification.

Other examples of fixable 35 U.S.C. 112(b) rejections:

    • Applicants incorrectly numbered the claims
    • Applicants failed to provide an antecedent basis before associating the word “the” or “said” with a claimed structural element
    • Applicants erroneously referenced element 1 of the invention as element number 2 and referenced element number 2 as number 1
    • In a third claim, Applicants referenced a second claim that depended from more than one previous claim
    • Applicants over utilized the conjunctions “and”, “but” or “or”
    • Applicants claimed structural elements are not interconnected

If you need legal assistance procuring your Patents and other intellectual property rights, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Improvement Patents on Spoons

Improvement Patents

Can Improvements on An Existing Patent be Patented? 

There are two key features of Patents and Improvement Patents in the United States:

  1.  The Patent Application must claim an invention is novel over the prior art and
  2.  It must also claim an invention that is non-obvious in the prior art

Basic parameters for an Improvement Patent’s validity in most countries other the United States are:

  1. The claimed invention must be novel over the prior art and
  2. It must have an inventive step, in view of the prior art

In the United States and foreign jurisdictions, one of the attributes of patent counsel is their ability to persuade Patent Examiners that the client’s Patent claims are novel and nonobvious or include inventive step and therefore are patentable.

Can Utility Improvement Patents for a Simple Invention (a Spoon) be granted?

Yes.

For clarity, a utility Patent is based on the invention’s structure and/or function rather than its nonfunctional appearance.  Design Patents would be directed toward ornamentation of a spoon.

Selected Examples of Utility Patents for Spoons from 1899 to the Present

 

1899 – Egg Spoon

 

1899 - Egg Spoon

 

 

1905 – Spoon

 

1905 - Spoon

 

 

1968 – Spoon

1968 - Spoon

 

 

2012 – Musical Spoon

2012 - Musical Spoon

 

2014 – Hair Spoon

2014 - Hair Spoon

It is estimated that spoons with handles have existed for at least three thousand years.  Humans still find ways to modify the basic spoon’s structure to obtain Patents for their new inventions.

If you need legal assistance procuring your Patents and other intellectual property rights or managing your maintenance fees, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

When is a Patent Obvious

What is an Obvious Patent Claim?

What does it mean when a Patent Examiner or Adverse Party argues that the Claim is Obvious?

Since the United States’ legal system is adversarial, winning an obvious-type Patent case can be difficult. In view of shifting burdens of persuasion, American jurisprudence requires admissible evidence, testimony and arguments to prove a case before a court or an administrative agency such as the Patent Office.

Under the US legal system:

  • When a Patent Examiner argues that a Patent Application’s claim is obvious, the Examiner argues that the claim is not patentable.
  • When an adverse party argues that the Patent’s claim is invalid, the adverse party argues that the Patent’s claim is obvious and, therefore, invalid.

35 United States Code 103 – Statutory Obviousness

35 U.S.C. 103 reads:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

The US Supreme Court’s Standard for Determination of When a Claim is Obvious

“Obviousness is decided as a matter of law based on four basic factual inquiries, as set forth in Graham v. John Deere Co., 383 U.S. 1…(1966), and elaborated in KSR International, Co. v. Teleflex Inc., 550 U.S. 398…”  Those inquiries are:

  1. The scope and content of the prior art
  2. The level of ordinary skill in the field of the invention
  3. The differences between the claimed subject matter and the prior art, and
  4. Any objective indicia of unobviousness, such as commercial success or long-felt need, or failure of others.

In a Pharmaceutical Composition, is the Replacement of a Carbon Functional Group with a Sulfur Functional Group Obvious?

  • In the case of In re Rousuvastatin Calcium Patent Litigation, 703 F. 3d 511, (Fed. Cir. 2012), the defendants argued that replacement of the known simple hydrophobic carbon functional group with a lesser known simple hydrophilic sulfur functional group was obvious.
  • The Patentee argued that at the time the pharmaceutical compound was invented there was no reasonable expectation of success for use of the simple hydrophilic sulfur functional group in reducing cholesterol levels.

On page 518 of the Rousuvastatin Calcium Patent Litigation case, the Court of Appeals for the Federal Circuit (the Patent appellate court) affirmed the District Court’s ruling that the Patentee’s claim was not obvious and that the Patent was valid and enforceable.

If you find the “obviousness” legal standard confusing and need assistance, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

How to get expired patent reinstated

Can Expired Patents Be Reinstated?

The short answer is: It depends. Let’s look into possible scenarios as they relate to unpaid patent maintenance fees.

A Common Scenario for Unpaid Maintenance Fees

“Our US company recently received an offer from a European competitor to purchase a small portfolio of Patents related to a product line that we no longer manufacture. The due diligence team declared that the offer was bona fide. However, due diligence uncovered that accounting failed to pay the maintenance fee for one of the Patents, and the Patent expired nine months earlier. This expired Patent is critical to the sale of the Patent Portfolio. Is there anything we can do to save the sale of the portfolio?”

Failure to Pay Maintenance Fees, Expired Patents and Patent Reinstatement

If the delay in paying the maintenance fee is unintentional, a petition to reinstate the expired Patent may be accepted by the USPTO:

37 Code of Federal Regulations – Reinstatement of Expired Patents

37 C.F.R. 1.378, in part, reads:

(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).

(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:

(1) The required maintenance fee set forth in § 1.20(e) through (g);

(2) The petition fee as set forth in § 1.17(m); and

(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

In the “Common Scenario” example at the beginning of this post; provided the European buyer agreed to the sale, the expired Patent could be reinstated:

Expired Patents – Section 2590 of the USPTO Manual of Patent Examining Procedure

 Section 2590 of the USPTO Manual of Patent Examining Procedure, in part, indicates:

      • If the delay in payment of the maintenance fee is unintentional, the USPTO may accept late payment of any maintenance fee filed after the 6-month grace period
      • A Petition that the delay in payment of the maintenance fee was unintentional would not be proper when the Patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the Patent
      • Petitions to accept unintentionally delayed payment of the maintenance fee in an expired patent, if expired for two years or less, can be processed digitally via the USPTO website
      • After the Patent owner failed to pay the maintenance fee for more than two years, a petition to accept the unintentional delay in payment of the maintenance fee can be filed in the USPTO and may reinstate the Patent

approval for patent reinstatement

FAQ: Situations for Expired Patents and Reinstatement

  • Your company opted to let the Patent expire for failure to pay the maintenance fee, and after 21 months, the company decided to pay the maintenance fee. Will this reinstate the Patent? Most likely – Yes.
  • Your company opted to let the Patent expire for failure to pay the maintenance fee, and after 36 months, the company decided to pay the maintenance fee and reinstate the Patent. Will this work? Depending on the facts – Possibly.
  • Your company did not pay two maintenance fees (NOTE: As a general rule, due times can be variable at 3 years, 7 years and 11 years in the USA and most international fees are due annually)? Can the patent be reinstated? No.
  • Your company intentionally did not pay the maintenance fee for 3 years? Can you get the patent reinstated? Probably not.
  • You are an individual who was made aware that your Patent had expired. Thereafter, you forwarded a money order to pay the required fees to the wrong address for the USPTO. Two years later, you learned that your Patent remained expired. Depending on the evidence presented to the USPTO, your Patent may be reinstated.

If you need legal assistance managing your maintenance fees, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Single Word Trademarks

Can a Simple Word be Trademarked?

Generally, it depends on whether there is a “likelihood of confusion” between your simple word Trademark and another Registration or Application for Registration having superior rights.

Title 15 United States Code – Marks Registerable on the Principal Register

15 U.S.C. § 1052, in part, reads:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.”

Can the Word “Medical” be Granted a Federal Registration?

In view of the case law interpretations of 15 U.S.C. § 1052, the following illustrations can be indicative of the possibility of the grant of a federal Registration for the simple word – Medical – by the United States Trademark Office.

  • Medical – for a dog collar could be the subject of a US Trademark Registration.
  • Medical – for a cast protecting a broken bone would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of a cast.
  • Medical – for a drill used for deep water petrochemical exploration could be the subject of a US Trademark Registration.
  • Medical – for a special type of drill used in placing dental implants would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of a drill used for placing dental implants.
  • Medical – for physicians services would not likely be granted a US Service Mark Registration.
  • Medical – for surgical scrubs would not likely be granted a US Trademark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of surgical scrubs.
  • Medical – for a professional football team could be the subject of a US Service Mark Registration.
  • Medical – for website services providing a platform for communications related to governments and politics could be the subject of a US Service Mark Registration.
  • Medical – for website services for continuing educations services for physicians and other medically related practitioners would not likely be granted a US Service Mark Registration. However, some Examiners could grant the Registration while other Examiners could argue that – Medical – is merely descriptive of medical education services.
  • Medical – for bottled water. If the bottled water was not used for medical treatments, – Medical – could be the subject of a US Trademark Registration.

Are You Confused Yet?

If you are confused by the above illustrations, you are not alone. As with other aspects of American jurisprudence, evidentiary facts (and the subjective interpretations those facts) influence whether or not a federal Registration can be obtained. When utilizing an experienced attorney, you have a higher probability of success in procuring a federal Registration of your simple word mark.

If you need legal assistance preparing or managing your Trademark/Service Mark or Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Color as Trademark

Can Color Be A Trademark?

Can You Trademark Based on Color?

Are you wondering if a particular use of color can be the subject of a Federal Trademark Registration?

  • The short answer: Yes, color can be a Trademark — when certain evidentiary facts are present.
  • The longer answer follows…

What is a Trademark?

A “Trademark,” according to 15 U.S.C. § 1027,  is “any word, name, symbol, or device, or any combination thereof — (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

Exclusions to obtaining a federal Trademark registration are covered in https://www.law.cornell.edu/uscode/text/15/1052.

The Doctrine of Trademark Functionality

In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), the Supreme Court held that the “pillow” shape of a shredded wheat biscuit was functional and not the subject of a Trademark Registration.

In the US Supreme Court case of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) the Supreme Court held that the colors of the brand name pharmaceutical capsules were functional and not the subject of a Trademark Registration.

In short, if the aspect is functional, it cannot be the subject of a federal Trademark Registration. However, in a footnote to Inwood Laboratories, Inc. case, on page 850, the Court wrote:

“Although sometimes color plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not. And, this latter fact—the fact that sometimes color is not essential to a product’s use or purpose and does not affect cost or quality—indicates that the doctrine of “functionality” does not create an absolute bar to the use of color alone as a mark.”

The Case of Colored Dry Cleaning Pads

Can green-gold color pads for dry cleaning presses be the subject of a federal trademark registration? Yep!

The US Trademark Office granted US Registration No. 1,633,711 for a “particular shade of green-gold applied to the top and side surfaces of the goods [pads]” to the Qualitex Company.  Another company, Jacobson, later began to sell its own green-gold pads. Among other causes of action, Qualitex sued Jacobson for Trademark infringement. Eventually, the case made its way to the US Supreme Court.

On page 166 of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, Mr. Justice Breyer wrote:

“It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function…the District Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex’s green-gold press pad color has met these requirements. The green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the green-gold color as Qualitex’s), it identifies the press pads’ source. And, the green-gold color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found “no competitive need in the press pad industry for the green-gold color, since other colors are equally usable.”)…Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law would protect Qualitex’s use of the green-gold color on its press pads.”

Conclusion on Color

To answer the initial question, according to the Supreme Court of the United States:

  • A green-gold color for a dry cleaner’s press pad is the subject of a federal Trademark Registration.
  • The blue and white or the blue and red colors of pharmaceutical capsules are not the subject of a federal Trademark Registration.

Trademark issues are complex, if you need legal assistance preparing or managing your Trademark/Service Mark or Patent Applications, please contact Business Patent Law, PLLC.

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