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.

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

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Trade Dress in Patent Law

Trade Dress: Likelihood of Confusion

What is Trade Dress?

Generally, trade dress relates to a product’s physical appearance, including its size shape, color and design. Texture is sometimes considered part of the product’s physical appearance. It can also refer to the manner in which a product is packaged, wrapped, labeled, presented, promoted or advertised.

When the plaintiff thinks that the defendant’s trade dress is likely to cause confusion with the plaintiff’s product, the plaintiff can sue under 15 United States Code 1125.  Section 1125 is entitled “False designations of origin, false descriptions, and dilution forbidden.”

Can an invention that is patented also have trade dress protection?

It depends – trade dress protection may be available.

Trade Dress: An Illustrative case for False Designation of Origin

The drawing below from US Patent 3,646,696 is set forth below. The plaintiff’s invention was used for such things as “Road Work Ahead” signs.

Trade Dress Illustration: Patent Law Drawing

After the ‘696 Patent expired, the defendant copied the plaintiff’s design.  The plaintiff argued that defendant’s copying of springs 16 and 18 was a trade dress false designation of origin.

Points of Contention

The Court indicated:

  • Trade dress can be protected under federal law
  • The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source
  • A design or package which acquires secondary meaning is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods
  • The [Trademark Act] provides a cause of action when any word, term name, or device, or any combination thereof is likely to cause confusion as to the origin, sponsorship or approval of the goods
  • Trade dress protection exists with the recognition that in many instances there is no prohibition against copying goods and products
  • Unless a Patent or Copyright protects an item, it will be subject to copying
  • The plaintiff must prove that the trade dress asserted is not functional

The defendant argued that plaintiff’s springs 16 and 18 shown in the above drawing were functional.

What the Court Determined

In the case of Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-30 (2001), the Supreme Court of the United States, held:

  • A prior patent, we conclude, has vital significance in resolving the trade dress claim.
  • A utility patent is strong evidence that the features therein claimed are functional.
  • Where the expired patent claimed the features in question, one who seeks to establish protection must carry the heavy burden of showing that the feature is not functional
  • This can be accomplished, for instance, by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

A trade dress that is functional is not enforceable under the Lanham Act [the Trademark Act].

Elements of a utility Patent are presumed functional.  However, on page 34 of Traffix Devices, Inc., the Supreme Court did not completely bar trade dress protection for current or previously patented items.  Mr. Justice Kennedy wrote:

“In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.”

The Basic Trade Dress Question

To answer the initial question, if the part of the patented invention is functional it cannot be protected under the Trademark Act.  If the part of the patented invention is arbitrary, incidental or ornament, protection of the Trademark Act may be available.

Need More Information?

If you need legal assistance preparing or managing your unfair competition issues or intellectual property 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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Patent Claim - Learn about patents

Patent Claims 101 – What is a Patent Claim?

What are Patent Claims?

Patent claims are for intellectual property what a property deed is for physical property. A property deed defines the physical boundaries of your real properly (real estate). Similarly, a Patent claim defines the ownership boundaries of your Intellectual Property.

Claims Determine If There Is Infringement

When a person crosses over your physical property line and enters onto your real property without your permission, they are trespassing and you can file a legal trespass action in the appropriate State court.

Likewise, when someone (who does not have your permission) attempts to use your patented Intellectual Property, you can file an infringement suit in the appropriate US District Court.

Are Patent Claims Complicated?

Because a Patent claim is a single sentence, the claim can be complex. Here are some Patent claim facts for you:

The Anatomy of a Patent Claim:

  • Since 1790, the US Patent Office has required that any Patent claim must be a single sentence
  • An independent claim is a Patent claim that does not reference or refer to another claim of the Patent
  • A dependent claim refers to another claim number in the preamble of the dependent claim
  • The words of the claim preceding “comprising” or “consisting” are the preamble
  • The words that follow “comprising” or “consisting” in a claim are the body of the claim

In Addition:

  • The body of the claim is used to determine patentability or infringement
  • A dependent claim can reference (depend on) an independent claim or another dependent claim
  • Dependent claims include all the structures/limitations of the claim (or claims) from which they depend

How Patent Claims Work

Below are examples of an independent Patent claim and three related dependent Patent claims. The parts of the independent claim (preamble and body) are labeled:

Independent Claim (#1)

[the preamble]         A transportation vehicle comprising:

[the body]                  a)  a frame supporting a surface area adapted to transport matter;

b) an axle attached to the frame; and

c) at least two wheels.

NOTE: A Patent Examiner could construe Independent Claim #1 to include: a bicycle, cart, motorcycle, wagon, trailer, automobile, truck, airplane, etc.

Dependent Claim (#2)

The transportation vehicle of  Independent Claim #1 further comprising a motor.

NOTE: A Patent Examiner could construe claim 2 to include: a motorcycle, automobile, truck, airplane, etc.

Dependent Claim (#3)

The transportation vehicle of Dependent Claim #2, wherein the surface area is adapted to carry at least 25 metric tons.

NOTE: A Patent Examiner could construe claim 3 to include a truck or an airplane.

Dependent Claim (#4)

The transportation vehicle of Dependent Claim #3 further comprising wings.

NOTE: A Patent Examiner could construe claim 4 to include an airplane.

Need Help With Your Patent or Patent Application?

If you need legal assistance preparing or managing 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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Patent law, popcorn dispenser and anticipated patents

Anticipated Patent Claims – 35 U.S.C. 102

When Your Patent is “Anticipated by a Prior Reference”

The Patent Examiner argues that one or more claims of my Patent Application are anticipated by a prior reference. What does this mean?

In short, it means that the Examiner argues that someone else invented your invention before you did.

Let’s expand on that:

35 United States Code (U.S.C.) 102, in part reads: “A person shall be entitled to a patent unless – the claimed invention was patented, described in a printed publication…before the effective filing of the claimed invention…” 35 U.S.C. §102 requires that the prior reference must have existed before your Patent Application was filed. When the Patent Application’s claim is rejected under 35 U.S.C. §102, the Examiner argues that the rejected claim is “anticipated.”

When a Patent Examiner argues that one or more of your Patent Application’s claims defining your invention are anticipated, the Examiner is saying that a single prior reference discloses all of the structures of your invention.

The Patent Appellate court[i] has held, “For a prior art reference to anticipate in terms of 35 U.S.C. §102, every element [structure] of the claimed invention must be identically shown in a single reference…These elements [structures] must be arranged as in the claim under review.”

How Can I Counter the Rejection?

One way to counter the Patent Examiner’s anticipation rejection is to amend the claim.

Therefore, you can amend the anticipated claim by deleting structure or adding structure to your invention. Additionally, you should add the changes to the wording of the Patent Application’s claims. For instance, if the alleged anticipated claim required a piece of furniture with four legs, you could exclude one of the legs from the claim to create a table with three legs. Similarly, you could add a back support to the claim to create a chair.

In addition, you can argue that the Examiner’s prior reference fails disclose every structure of your invention as claimed in the Patent Application.

How Similar in Structure and Use Does the Anticipated Claim Have to Be?

For instance, can the Patent Examiner use a prior reference that is unrelated to my invention’s use to successfully argue that my claim is anticipated? Can you give me an example?

Sure! Let’s take the question “Can an Oil Can’s Nozzle Anticipate a Popcorn Dispenser?” which was the basis of an actual case!

Yes. An oil can’s nozzle does anticipate a popcorn dispenser. Here’s how it was argued:

In the case of In Re Schreiber, 128 F. 3d 1473 (Fed. Cir. 1997), the Patent Examiner argued that Swiss Patent No. 172,689-Harz  disclosed a “spout for nozzle-ready canisters” that anticipated Schreiber’s claim for a popcorn dispenser.

On Page 1447 of Schreiber, the Court of Appeals for the Federal Circuit wrote:

    • Schreiber argues…that Harz [Swiss Patent No. 172,689] does not disclose that such a structure can be used to dispense popcorn from an open-ended popcorn container.
    • Although Schreiber is correct that Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat anticipation.
    • It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.

In conclusion, according to Schreiber, the function of the invention is irrelevant to the Patent Application’s claims in the United States. So an existing patent on an oil can did, in fact, prevent the patent of a popcorn dispenser with a similar shape, despite the completely different function.

Patent Law Can Be Confusing

If you need legal assistance with responding to a USPTO Office Action, please contact Business Patent Law, PLLCBusiness Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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[i] In Re Bond, 910 F.2 831, 832 (Fed. Cir. 1990).

Legal cease and desist letter on patent infringement

Cease and Desist Letters

I have received a cease and desist letter

The letter claims that my company is infringing a US Patent.  Can you (and your company) ignore the letter? I wouldn’t recommend ignoring a letter. If your company ignores the cease and desist letter, your company could regret not responding to that letter.

How do I know if the cease and desist letter is valid?

An experienced patent attorney can assist you in determining if the claim of infringement has merit. Among other things, your patent counsel will review the United States Patent and Trademark Office (USPTO) record regarding the Patent. Additionally, your attorney will compare your company’s allegedly infringing goods and/or services against the USPTO record.

It is also wise to have your legal counsel prepare an opinion regarding whether or not your company’s goods or services are infringing the potential plaintiff’s Patent.

What are my company’s options?

When responding to an allegation of patent infringement, use experienced counsel. Your patent attorney may recommend any of the following options and/or actions. For example, you (or your company) could:

  • Secure an agreement with the Patent holder stating that your company’s goods and/or services do not infringe the Patent holder’s Patent
  • Enter into a license agreement with the Patent holder
  • Establish a cross-license agreement with the Patent holder
  • Phase-out and cease the use of your company’s allegedly infringing goods and/or services
  • Your company and the Patent holder may agree to mediation or arbitration
  • Join with other third parties receiving a similar cease and desist letter from the Patent holder and collectively litigate against the validity of the Patent holder’s Patent
  • Institute a USPTO Post Grant Procedure against the patentability and/or validity of the Patent holder’s Patent
  • In a federal district court, institute a Declaratory Action Judgment action against the Patent holder
  • After the Patent holder has instituted an infringement action against your company’s goods and/or services in a federal district court, counter-claim that the Patent holder’s Patent is invalid
  • After litigation is commenced in the federal court system, settle the matter

Costs to the company

As a general rule, costs for a USPTO Post Grant procedure are much less than the costs of litigating in the federal court system.  The costs associated with USPTO Post Grant procedures and mediation or arbitration can be similar.

If you have received a cease and desist letter and need legal assistance, please contact Business Patent Law, PLLC. Likewise, if your company believes another company has infringed your Patent and you need to send a cease and desist letter, please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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.

foreign nations and US LLCs and tax law

Foreign Owner – US Limited Companies

Can United States Limited Liability Companies be Owned by Foreign Members?

Yes. The United States allows citizens of foreign countries to own a US Limited Liability Company (LLC). A foreign owner can own an equity ownership interest of one hundred percent or a fractional interest.

Is it Advantageous for a Citizen of Foreign Nation to Own a US LLC?

Yes. Ownership of a US Limited Liability Company (LLC) allows a foreign citizen to participate in the largest single economy on earth.

For the purposes of this post, what is referred to as a US LLC is, in fact, a LLC created under the laws of one of the Fifty States or the District of Columbia. Some States allow the formation of a Professional Limited Liability Company (PLLC). A PLLC is a specific type of LLC.

Taxation of US LLCs

Business Patent Law, PLLC does not provide specific tax counsel for its clients. However, we can offer some general principles regarding foreign ownership of US LLCs:

  • Most nations tax the income of their citizens, regardless of jurisdiction where the income was generated.
  • Under US federal tax law, LLCs are considered “pass-through entities” for tax purposes.  This means that profits and losses are passed through to the owners of the LLC.
  • As a general rule, most LLCs are required to pay some type of taxes and/or fees in the State of the LLC’s organization and any other State in which the LLC does business.
  • State law taxes and fees vary from state to state and are usually less than US federal taxes.

Does the US Participate in Tax Treaties with Other Nations?

  • Yes.
  • Before purchasing ownership in a US LLC, a potential foreign owner should seek legal and tax counsel in both the owner’s home nation and the United States.
  • The United States has enacted tax treaties with different nations.
  • Different tax treaties produce different tax consequences for the foreign owner of a US LLC.
  • Among other things, the tax treaties can control what is taxed or is not taxed and payment of taxes in the United States and the foreign owner’s home nation.

Does a Foreign Owner of a US LLC need to register with the IRS?

It depends on the Tax Treaty between the foreign owner’s home Nation and the United States.

As a general rule, a foreign owner owning 25% or more of the US LLC will need to register with the US Internal Revenue Service (IRS). When the foreign owner is required to register with the IRS, the foreign owner must secure a Foreign Taxpayer Identification Number (FTIN). It can take several months for the IRS to issue the FTIN.

Under some tax treaties, an owner of less than a 25% equity interest in the US LLC may not be required to register with the US IRS.

Under some tax treaties, an owner of less than a 25% equity interest in the US LLC may not be taxed on the owner’s profits from the US LLC. However, the foreign owner will likely be taxed on the LLC’s profits in the foreign owner’s home Nation.

If the US LLC should file certain documents related to foreign ownership and does not file the documents with the IRS, the IRS will financially penalize the US LLC.

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

If you have questions about equity ownership of a US LLC, please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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.

US Patents Held By Foreign Companies

Foreign Companies and US Patents

Can Companies Outside the United States Obtain US Patents?

Yes. The United States has the largest Gross Domestic Product on earth. Foreign Companies that do not have a physical presence in the United States can sell their goods or services in the United States.

For most foreign companies, sales in the US market improve earnings for the foreign businesses.

Advantages of US Patents for Foreign Businesses

  • The United States has a long history of enforcing domestic or foreign Patentees’ rights
  • Granting a US Patent gives the Patentee the right to file a legal action to stop third parties from making, using or selling their patented invention
  • Under Title 35 of the United States Code, a foreign Patentee can sue an alleged infringer in a United States District court and win damages

Options for Foreign Companies

Foreign Companies filing a US Patent Application in the United States Patent and Trademark Office (USPTO) may:

  • Initially file the US Patent Application in the USPTO
  • File a Patent Application in their company’s jurisdictional Patent Office followed by the subsequent filing of the US Patent Application (prior to the expiration of the treaty deadline)
  • Initially file a Patent Cooperation Treaty (PCT) Application in the USPTO followed by the subsequent filing of the US National Stage Application (prior to the expiration of the PCT Treaty deadline)
  • File a Patent Application in your company’s jurisdictional Patent Office followed by the subsequent filing of a PCT Application claiming priority to the initially filed jurisdictional Patent Application
  • Prior to the PCT Treaty deadline, file a US National Stage Application in the USPTO which claims priority to the PCT Application filed by your company that claimed priority to the initial Patent Application filed by your company in its jurisdictional Patent Office

Basic Requirements for Foreign Company Patent Filings

  • English language translation/transliteration of the jurisdictional Patent Application or PCT Application – if the language of the as-filed jurisdictional Patent Application or PCT Application was not English
  • Pay USPTO Processing Fees
  • Submit Specifications and Drawings
  • Claims – usually presented in an “Americanized” preliminary amendment format to increase clarity and minimize USPTO Processing Fees
  • Provide Inventor(s) Declaration(s)

If all this sounds a bit complex, we can help. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you have questions about filing your company’s US Patent Application, please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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.

Business Taxes in 2019

Your Business Income Taxes

In the United States, businesses pay income taxes

For millennia, governments have taxed businesses and individuals. Payment of taxes on income generated by business is a quarterly/annual requirement in the United States. For as long as the business remains active, it will pay taxes. The filing of returns and the payment of income taxes can sometimes overwhelm small businesses owners.

As a small business owner, it may be possible to minimize taxes, by using a different business structure.

Select the way your company will be taxed

Some options for your business include:

  • C-Corporation (Inc.)
  • C-Corporation – Subchapter S
  • Limited Liability Company
  • Sole Proprietorship
  • Partnership

Selecting your company’s jurisdiction

Where you choose to incorporate or organize your company will impact your taxes.

If your company does business in several States, they will usually require you to pay taxes on income generated in each State.

Companies can, however, “shop” for States that do not have an income tax. In 2019, South Dakota and Wyoming do not impose State corporate income taxes or State individual income taxes.

Some jurisdictions give more favorable tax treatment to businesses incorporated/organized in that state which also have their principal office in the State, as compared to those formed in another State.

But, beware, in some States, lower State business income taxes may increase the total amount of Federal business income taxes.

Product logistics, the availability of qualified employees, energy costs and natural resources can sometimes dictate which State you select to incorporate or organize your business.

Federal Income Taxes for C-Corporations

C-Corporations are taxed on profits.  A shareholder receiving a C-Corporation’s profit distribution will also pay income tax on the profits received.

The Tax Cuts and Jobs Act of 2017 capped the maximum tax rate for income generated by a C-Corporation at 21%.

Federal Income Taxes for Pass-Through Legal Entities

Subchapter S Corporations, Limited Liability Companies and Partnerships are known commonly as “pass through” entities.  Profits and losses generally pass through to the owners of the legal entity, so this income will be declared on the owners’ individual income tax returns.

With some exceptions, the Tax Cuts and Jobs Act of 2017 allows a Qualified Business Income Deduction of up to 20% of Qualified Business Income for sole proprietors and pass-through entities.

What is Qualified Business Income?

Qualified Business Income is the net amount of qualified items of income, gain, deduction and loss from any qualified trade or business. Only those items included in taxable income are counted and these items must be effectively connected with a U.S. trade or business. Items such as capital gains and losses, certain dividends, and interest income are excluded from Qualified Business Income.

Most growing companies eventually reach annual revenues where the combination of business counsel and tax counsel can improve the bottom line for your company.

Business Patent Law, PLLC does not provide tax counsel for specific matters, but does provide business counsel for businesses.

If you have questions about your company’s business structure, please contact Business Patent Law, PLLC, and we will discuss possibilities for your business.

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.

Types of Confidentiality Agreements for Business

Confidentiality Agreements

Should Your Business Use Confidentiality Agreements?  

Should your company use confidentiality agreements?  If your business has information it needs (or wants) to keep out of the public domain, then yes. Information of this type may include:

  • Certain types of intellectual properties
  • Company information disclosed to potential investors and investors identities
  • Customer lists
  • Employee salaries
  • Independent contractor identities
  • Research and development assets
  • Suppliers identities
  • Tax returns
  • Trade secrets, etc.

As a general rule, once information enters the public domain, you can’t make it private. You have to be proactive.

Three Types of Confidentiality Agreements 

1)        Confidentiality Agreement

This agreement can be used when the involved Parties agree to hold the information disclosed in “strict confidence.” When the Parties become adverse or one of the Parties is seeking to avoid the terms of the Confidentiality Agreement, the Parties may argue over:

  • What was the information disclosed in “strict confidence?” (It is helpful to specifically identify the information covered in the Confidentiality Agreement itself)
  • What the Party receiving the disclosed information must do with the information
  • Which State’s law controls the provisions of the Agreement
  • Where the venue and personal jurisdiction will be, should litigation become necessary

2)        Confidentiality and Evaluation (CE) Agreement

Potential Patent rights (or Patent rights) can be the subject of a CE Agreement. A CE Agreement specifies that the subject matter disclosed is to be held in “strict confidence” and that the information is provided solely for the purpose of evaluation.  In the event one Party is dissatisfied with the CE Agreement, the same issues as identified in the above (Confidentiality Agreement) section will apply here. Additionally, this type of agreement will need to specify:

  • Is audible disclosure a disclosure to be held in “strict confidence?”
  • Is visual disclosure a disclosure to be held in “strict confidence?”
  • What happens when the Party receiving the disclosure evaluates the audible or verbal disclosure outside the jurisdiction where the Parties are domiciled?

This matters because any public disclosure related to potential Patent rights (prior to the filing of the Patent Application) can bar any future Patent related to the disclosed information

3)        Confidentiality, Evaluation and Noncompetition (CEN) Agreement

As with the two agreement types above, almost anything that one Party wants to be kept in “strict confidence” can be the subject matter of a CEN Agreement. Along with Confidentiality and Evaluation, a CEN Agreement also includes a Noncompetition (anywhere in the world) provision for the Party receiving the information. Whenever possible, Business Patent Law, PLLC recommends its clients use a CEN Agreement.

In the event one Party is dissatisfied with the CE Agreement, the same issues as identified in Sections 1) and 2) above, may also be grounds for argument between the Parties.

An example of when a CEN Agreement might be used: Private/nonpublic companies often have corporate bylaws that require shareholders to execute CEN Agreements before shareholders can be issued stock.

If a Business Fails to Use Confidentiality-Type Agreements 

Unless some type of Agreement between the Parties is executed, the disclosing Party has minimal legal recourse against the receiving Party repeating publically the disclosed information or using the disclosed information for another reason.

Here are a few ways such disclosures could become a problem:

  • Public disclosure of the company’s private information will likely temporarily disrupt the company’s operations
  • What would happen if all the company’s employees were aware of each employee’s salary?
  • What would happen if the company’s competitors were aware of the company’s research and development information?
  • A trade secret disclosed publicly is no longer secret and the secret is lost forever

What You Need To Know About Confidentiality Agreements

  • Confidentiality Agreements between trustworthy Parties can improve profits for both companies
  • The bargaining power of the Parties tends to influence the type of Confidentiality Agreement executed  (A publicly traded company will likely have a Confidentiality-type Agreement that is more favorable to the publicly traded company when contracting with a business having annual sales of $2M)
  • Bad actors tend to exploit the other Party to a contract (Character of the Parties matters)
  • Agreements executed between Parties who were not represented by legal counsel may be unenforceable
  • Confidentiality Agreements that were drafted for a first purpose may not be acceptable for a second (but similar) purpose
  • Without the advice of legal counsel, parties my draft contracts for almost anything they feel is important at the time the contract was allegedly executed (Some of these contracts may be enforceable, some may not)
  • If the alleged contract is only partially in writing, there may be issues when memories fade ten years later  (Get it in writing)
  • Perspective matters (Three different eyewitnesses can witness the same event and three distinct testimonies may be offered into evidence)
  • Written, properly executed agreements can minimize business disruptions

If you have questions about intellectual properties or agreements, please contact Business Patent Law, PLLC. We are here to help you grow your business and protect your intellectual properties.

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

Representing Yourself for Trademarks and Patents

Representing Yourself for Patents & Trademarks: Going “Pro Se”

Pro Se USPTO Representation

Pro se” is a Latin phrase meaning “for himself.” Under United States law, an Applicant can represent himself/herself/itself before the United States Patent & Trademark Office (USPTO).

Can a pro se Applicant achieve favorable results from a USPTO Examiner? Maybe. Maybe not. Success may depend on the legal skill of the Applicant.

What is a “Favorable Result” for a Pro Se Applicant?

Favorable results include attributes such as:

  • Defensibility against an allegation of unpatentability
  • The durability of the patent or trademark
  • Enforceability
  • The scope of rights granted by the USPTO to the Applicant

Three Primary Types of USPTO Representations 

An Applicant can be a large company, a small company, a partnership, a trust, an individual, or another entity.

Large Businesses

Many large companies have “in-house” intellectual property attorneys who represent the large companies before the USPTO. If an “in-house” attorney fails to meet management’s objectives, the large company usually will hire another attorney who will meet the large company’s objectives.

For legal matters before the courts or other tribunals, large companies usually hire one or more “outside counsels” to represent the company. Sometimes, these intellectual property cases can have more than a billion dollars in potential damages.

Small Businesses with Resources

Small companies with sufficient revenues usually retain smaller intellectual property law firms to represent their company before the USPTO and the courts or other tribunals. The USPTO defines a small business as a legal entity with 500 or fewer employees.

Small Businesses, Start-ups or Individuals on a Tight Budget

Sometimes, small companies, start-ups or individuals opt for pro se representation before the USPTO, based solely on their budget limitations. Pro se representation by a non-lawyer may achieve favorable results for the Applicant. According to the USPTO database, it appears that favorable results tend to be more closely associated with Trademark Applications than with Patent Applications.

Be aware: if the pro se Applicant’s results are not favorable, the expense of hiring an intellectual property attorney in an attempt to achieve better results will likely be much more costly than it would have been to retain an attorney at the beginning of the process. Unfortunately for the Applicant, sometimes the facts associated with the Application are so unfavorable that issues with the Application cannot be corrected.

What if the USPTO Says No?

What can a pro se Applicant do when an Examiner refuses to approve the Applicant’s Mark for registration? What does the pro se Applicant (and now owner of a federal Registration) do when a USPTO Opposition or Cancellation Proceeding is initiated against the owner’s Federal Registration?

Business Patent Law’s Recommendation:  seek the advice of an intellectual property attorney who has experience practicing before the US Trademark Office. The experienced professional may be able to correct or resolve the Trademark Application issues and preserve the Applicant’s procedural and substantive rights.

What if an Examiner makes your Patent Application Rejection Final? 

The Patent Applicant’s options can include filing one of the following:

  • An Appeal
  • A Request for Continued Examination
  • A Continuation Application
  • A Divisional Application

An Applicant may also allow the Application to go abandoned.

Business Patent Law’s Recommendation: seek the advice of a patent attorney who has experience practicing before the US Patent Office. There is no substitute for a seasoned patent attorney representing the Applicant before the US Patent Office.

Meeting USPTO deadlines       

When seeking an intellectual property attorney to commence representation of a previous pro se Applicant, it is essential that an attorney be contacted with adequate time remaining before the USPTO deadline.  A well-seasoned intellectual property attorney will likely refuse to take on a previous pro se matter when notified only days before the deadline.

If you have questions about intellectual properties and representation before the United States Patent & Trademark Office, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

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