International Classifications for Trademarks

International Classifications for Trademarks

The Nice Treaty 

The United States is a party to the June 15, 1957 Nice Treaty and its subsequent amendments. A US Trademark or Service Mark Registration is granted in one or more of the forty-five International Classifications of the Nice Treaty.

  • There are 34 International Classifications for Trademarks
  • There are 11 International Classifications for Service Marks

For the rest of this article, Trademarks or Service Marks will be referred to as “Marks.” Under Title 15 of the United States Code, the applicant must demonstrate interstate or international use before a federal Mark Registration is granted.

In the United States Patent & Trademark Office (USPTO), a government filing fee is required for each International Class in which an applicant seeks federal Registration. Most companies do not register their Marks in all International Classifications.

How International Classifications Influence the Registration Procedure

As a general rule, US Trademark Examiners will not allow an Application of a Mark to become a Registration if there is a “likelihood of confusion” between the Application’s Mark and another Registration or pending Application for Registration. The examination of the Applicant’s Mark may be limited to prior Registrations and Applications in the same International Class.

An Applicant can be granted a US Registration in some International Classes, but not in other International Classes.

Influence over Registration

In this hypothetical example, we will consider a brand called GoodBad. The company that produces the GoodBad product is seeking registration of its Mark. Let’s review the following possible scenarios:

If GoodBad is a Razor Brand

1.) Applicant seeks registration of the – GoodBad – Mark for razors in International Class 8 (Hand Tools & Implements) and there is a prior Registration of the – Good – Mark for razors in International Class 8.

The Trademark Examiner would probably find a “likelihood of confusion” between the – GoodBad – Application and the existing – Good – Registration and deny registration of Applicant’s – GoodBad – Mark.

2.) Applicant seeks registration of the – GoodBad – Mark for razors in International Class 8 (Hand Tools & Implements) and there is a prior Registration of the – Good – Mark for scalpels in International Class 10 (Surgical, Medical & Dental Apparatus).

The Trademark Examiner would probably not find a “likelihood of confusion” between the – GoodBad – Application and the – Good – Registration and allow Applicant’s – GoodBad – Mark to mature into a Registration.

If GoodBad is a Beverage Brand

1.)  Applicant seeks registration of the – GoodBad – Mark for teas in International Class 30 (Staple Foods) and there is a prior Registration of the – GoodBad – Mark for blouses, coats, dresses, jackets, pants and shoes in International Class 25 (Clothing).

The Trademark Examiner would probably not find a “likelihood of confusion” between the – GoodBad – Application for tea and the – GoodBad – Registration for clothing and would allow Applicant’s – GoodBad – Mark to mature into a Registration.

2.) Applicant seeks registration of the – GoodBad – Mark for coffees and teas in International Class 30 (Staple Foods) and there is a multibillion-dollar company that owns prior Registrations of the – GoodBad – Mark for:

  • Facial makeups in International Class 3 (Cosmetics & Cleaning Preparations);
  • Pharmaceutical compositions used in cosmetology and dermatology treatments in International Class 5 (Pharmaceuticals);
  • Custom-made bedroom, dining room and living room furnishings in International Class 20 (Furniture);
  • Blouses, coats, dresses, jackets, pants and shoes in International Class 25 (Clothing); and
  • Wines in International Class 33 (Wines & Spirits).

In this scenario, some Trademark Examiners would allow the Applicant’s – GoodBad – Mark for coffees and teas to be published for Opposition while other Trademark Examiners would deny registration. Should Applicant’s – GoodBad – Mark be published for Opposition, there is a high probability that the multibillion-dollar company would file either a USPTO Opposition or Cancellation Proceeding against Applicant’s – GoodBad – Mark.

If GoodBad is a Service Brand

Applicant seeks registration of the – GoodBad – Mark for the provision of continuing education services for physicians, surgeons and other medical personnel in International Class 41 (Education & Entertainment Services) and there is a prior Registration of the – GoodBad – Mark in International Class 36 (Insurance & Financial Services) owned by a multistate national bank that also specializes in the provision of accounting services for physicians and surgeons under the – GoodBad – Mark.

Although each – GoodBad – Mark is associated with a different International Class, it is highly probable the Trademark Examiner would find a “likelihood of confusion” between the – GoodBad – Application and the – GoodBad – Registration and deny registration of Applicant’s – GoodBad – Mark.

Need Help With International Classifications?

If you have questions about your company’s Marks or you seek to register a Mark, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and 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.

Retain Control of Patent Assets

Control Patent Assets

Who controls a Patent? Inventor? Company?

35 United States Code (U.S.C.) 101 reads as follows:

“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 therefore . . . ” and this is the starting point for determining ownership of Patent Assets.

Last month’s blog included illustrations of how a company can lose control of its Patent Assets. This month we will explore steps you can take to retain control of your company’s patents.

Control of Patent Assets

Whenever possible, companies should limit the possibility that statutes and case law will determine the ownership of Patent Assets and other Intellectual Properties. To blindly believe that because the company paid someone to do something for the company, the company owns what was created is not always effective. It’s similar to people assuming that when they die without any estate planning, State law will distribute their property according to their wishes. It seldom works that way.

How to Better Control Company Patent Assets

Use contracts with employees, agents, and independent contractors to ensure the company’s ownership of the invention’s Intellectual Property rights. Some  conditions for control of Intellectual Property rights can include:

1. As a condition of employment, the employee agrees, in writing, that the company is the owner of:

  • all inventions invented by the employee; or
  • the inventions invented by the employee at any workplace provided by the company or with devices, tools, programs, etc. supplied by the company; or
  • the inventions invented by the employee that are associated with the company’s goods or services or the company’s pipeline of goods or services.

2. As a condition of employment, the employee gives the right of first refusal (in writing) to the company as to whether the company will own the invention.

3. Prior to hiring an agent or independent contractor, the company requires that agent/independent contractor to sign a written agreement stating that:

  • all the inventions invented by the agent/independent contractor at any workplace provided by the company or with devices, tools, programs, etc. supplied by the company are owned by the company; and/or
  • all inventions invented by the agent/independent contractor associated with the company’s goods or services or the company’s pipeline of goods or services belong to the company.

Control Your Company’s Patent Assets or Someone Else Will

An assignment document is used to transfer ownership of the invention’s intellectual property rights to the company.

If the employee will not agree to assign Patent Assets to the company as a condition of employment, hire someone who will.

The same approach should be applied to agents and/or independent contractors.

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

Patent Ownership Determination

Who Owns Patents – It Depends

Ownership – Patents

Article 1, Section 8, Clause 8 of the United States Constitution reads: [The Congress shall have power] “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.” The Constitution does not, however, address who owns the Patent or Copyright.

When an inventor invents a novel and non-obvious composition, device or method, who owns the Patent?

That depends.

Patent Rights Are Federal, But Patent Ownership Rights…

Under the United States Constitution and Title 35 of the United States Code, the granting and enforcement of Patents are exclusively matters of federal jurisdiction. However, unless owned by a federal entity, the ownership of Patents is a matter of State Law. Intellectual property ownership rights flow from Patents and who owns property rights is usually a matter determined by State Law,

Who Owns The Patent?

The following examples show how different situations impact or can impact the determination of Patent ownership:

Illustration 1

The Inventor is self-employed, invents the invention and is domiciled in State A.

The Inventor owns the entire interest in the Patent’s Intellectual Property Rights.

Illustration 2

The Inventor is an employee of Company B. The Inventor invents the invention while at work on the premises of Company B. Both Company B and Inventor are domiciled in State A.

In most jurisdictions, Company B owns the entire interest in the Patent’s Intellectual Property Rights.

Illustration 3

The Inventor is an employee of Company B and Company B is domiciled in State A. In the Inventor’s garage located in State Z, the Inventor invents the item related to the products sold by Company B.

Some courts would hold that Company B owns the Patent’s Intellectual Property Rights while other courts would hold that the Inventor owns the Patent’s Intellectual Property Rights.

Illustration 4

The Inventor is an employee of Company B that is located in State A. In the Inventor’s garage located in State Z. The Inventor invents an item not related to the anything manufactured or distributed by Company B.

Most courts would hold that the Inventor owns the Patent’s Intellectual Property Rights.

Illustration 5

The Inventor is an Independent Contractor who has worked onsite, on and off, at Company B’s plant located in State P for more than a year. Company B’s headquarters are located in State A. The Independent Contractor invented an improvement to Company B’s patented product in State J.

Some courts would hold that Company B owns the Patent’s Intellectual Property Rights. Other courts would hold that the Independent Contractor owns the Patent’s Intellectual Property Rights. Some States would not have any case law corresponding to this scenario.

Illustration 6

Company B is domiciled in State A and displays its patented product line at a trade show in State N. The chief engineer of Competitor X takes photographs/videos of Company B’s patented product line at the tradeshow. The chief engineer returns to Competitor X’s headquarters with the photos/videos. At the headquarters, located in State Q, Competitor X’s engineering staff invents several improvements to Company’s B patented product line which ultimately results in Improvement-Type Patents for Competitor X.

Courts would hold that Competitor X owns the Improvement-Type Patents – However, a federal court could also determine that Competitor X’s Improvement-Type Patents infringed Company B’s patented product line.

How to Control Ownership of Patents

What can a business do to limit its Intellectual Property from flying out in many different directions?  Next month’s blog will address some of these issues.

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

Entrepreneurs Small Business Startup Advice

Advice for Entrepreneurs and Small Businesses

Entrepreneurs and Small Businesses

In the United States there are approximately 29,000,000 small businesses. Most of these small businesses are founded by one or more entrepreneurs. One US Small Business Administration (SBA) measure for defining a small business is: a small business has 500 or fewer employees. According to the SBA, of these 29 million small businesses, approximately 23,000,000 small businesses do not have any employees.

In the United States, approximately one-half of all jobs are supplied by small businesses, so there is a correlation between more small businesses and increased availability of jobs.

Entrepreneurs Create Small Businesses

First, the entrepreneur conceives the invention/product/service and/or business model. Then that entrepreneur will develop a method to commercialize the invention/product/service. According to the SBA, each year more small businesses “are birthed than die.” Over the years, BPL has witnessed entrepreneurs who fail to realistically approach the problem of anti-commercialization forces that result in the death of small businesses. At the same time, those entrepreneurs who do persist can create small businesses that have 100 or more employees with annual sales of 200 million dollars or more.

The owners of a $200MM small business usually have a group of trusted advisors in place, but what about startups?

Entrepreneur Advice and Startup Considerations

If you are one of the 23 million small business owners, entrepreneurs or start-ups, you should:

  • Think and rethink the invention/product/service
  • Discover competitors and discern how your invention/product/service is different – your market niche is likely narrower than you originally thought
  • Determine how to make a profit in your niche market
  • Seek and listen to the advice of other successful small business owners
  • File Intellectual Property Applications – if your market and price point(s) justify the filings
  • Patents owned by startups provide the owners a limited monopoly to prevent others from making, using, offering for sale or selling their patented invention
  • Investors appear to like small businesses with Intellectual Property portfolios
  • Prepare a business plan
  • Commence assembling your team of trusted advisors – mentors first – then accountants, attorneys, engineers, insurance professionals, investors, lenders, and scientists, etc.

Many small business owners reap large financial rewards when the small businesses are sold to a third party.

Get Help With Your Small Business Venture

Business Patent Law, PLLC would like to assist you with your small business or Intellectual Property needs.  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 Intellectual Property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Rental Property and Intellectual Rights

Real Estate Rental, Tangible Property and Intellectual Property Rights

Relationship Between Commercial Rental Property and Inventories

Landlords own the real property rented by tenants (rental property). Tenants have an interest in the use of that real property. A commercial landlord rents square footage to the tenant and grants the tenant permission to operate a business from the rented space. Under most commercial leases, inventory remains the personal property of the tenant. Landowners may also operate their own businesses from commercial real properties.

Real Property Cases: Traditionally Matters for State Courts, However…

For centuries, disputes involving real property and rental property contracts have fallen under the law of the jurisdiction where the real estate is located. Each State has its own version of its real property laws. However, in today’s world, federal laws can influence a State’s real property laws.

Intangible Patented Inventions as Tangible Personal Property

A Patentee can sell tangible widgets that include intangible patent rights for the circuitry, processor, and memory that cause the tangible widgets to operate differently from unpatented widgets. Patent infringement of the patented widget can result when someone who did not purchase the patented widget from the Patentee makes, uses, sells or offers to sell the patented widget without the permission of the Patentee.

Under United States law, Patent infringement cases have exclusive jurisdiction and venue in federal district courts.

When Patented Widgets are Offered for Sale on Consignment

Possible interactions between the real estate owner or the commercial tenant (hereinafter Commercial) and the Patented Widgets Owner (hereinafter PWO):

  • As long as Commercial and PWO meet the terms of the consignment agreement, both parties are probably happy.
  • When Commercial refuses to pay PWO according to the consignment agreement, the PWO could sue the Commercial for breach of contract in a State court.
  • When Commercial refuses to honor the consignment agreement and subsequently gives the patented widgets to a third party who thereafter uses the patented widgets in the third party’s plant. Under the Supreme Court’s Impression Products, Inc. v. Lexmark International, Inc., 581 US 1523 (2017) case, because there was no sale of the patented widgets by the Patentee, PWO can sue both the thirty party and Commercial in a federal district court for patent infringement. Any case by PWO for breach of contract by Commercial would likely be joined with the patent infringement case in federal court.

The commercial tenant (hereinafter Tenant) and the PWO:

  • When Tenant sublets a space for a booth to PWO and PWO fails to pay rent to Tenant, the Tenant can sue PWO in State court for collection of unpaid rent.
  • In a State that provides for commercial landlord lockouts and seizures of personal property, Tenant fails to pay rent and the landlord locks out and seizes all inventory including PWO’s patented widgets. Under the lease, Tenant did not have a right to sublet space to PWO and the landlord is unaware that PWO’s patented widgets are not part of Tenant’s inventory. After seizing PWO’s patented widgets, the landlord sells PWO’s patented widgets to a third party who resales the patented widgets to a fourth party who destroys the patented widgets and sells the junked parts to a recycler. Under Impression Products, Inc. v. Lexmark International, Inc., 581 US 1523 (2017), because there was no sale of the patented widgets by the Patentee, PWO could sue the commercial landlord, the third party and the fourth party for patent infringement in federal court. For the landlord, the third party and the fourth party, reliance solely on real estate law is insufficient to prevent a patent infringement lawsuit in federal court.

Have More Questions About Intellectual Property?

Contact Business Patent Law, PLLC  to get your questions answered and to discuss possibilities for your business and 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.

Personal Property Assets and Real Property Assets

Assets – Real – Personal

Personal Property Assets versus Real Property Assets

Most companies have both personal property and real property assets. As general rule, real property includes the land, building(s) attached to the land and fixtures attached to the building(s). A personal property asset is any asset other than real property.

The Relationship Between Real Property and Personal Property

Buildings, Structures and Fixtures are Tangible Real Property

By way of illustration, your plant’s building and its fixtures (such as cooling fans, ductwork and pipes) are generally considered tangible real property. Real property assets are tangible and can become tangible personal property assets. When an old cooling fan is replaced with a newer more efficient cooling fan, the new cooling fan becomes a tangible fixture and the old fan becomes tangible personal property.

Real Property Boundaries

A deed sets forth the boundary lines of the real property. Without permission of the land owner, anyone who crosses over the boundary lines of the real property may be charged with trespassing.

Patents are Usually Intangible Personal Property Assets

The claims of a Patent “stake out” the legal boundaries of the Patent. An analogy is the 1849 California Gold Rush where miners staked out their “gold fever” claims in the Sierra Nevada Mountains.

When the Patent claim remains valid, anyone who invades the space claimed by the Patentee without permission may become a defendant in an infringement suit. Staking your Patent infringement claims can be a “rough and tumble” adventure for both the plaintiff and the defendant. Under some select circumstances, that legal tousle may result in the defendant paying treble damages.

  • A few US Patents have been issued for real properties (e.g., building components attached to land), but most Patents are valuable intangible personal property assets.

Goods Covered by Patent Claims are Tangible Personal Property Assets

As noted above, Patents are generally intangible personal property assets. However, the widgets manufactured by your company that are covered by one or more claims of your Patent(s) are tangible personal properties which could also fall under the parameters of the Several States Uniform Commercial Codes. And if your widgets are medical devices, FDA approvals of the tangible personal properties are required before the widgets can be sold for medical use in patients.

Simultaneous Multiple Property Types

What happens when a situation arises where there are simultaneous real property, personal property and intellectual property issues? This will be addressed in a future post, so stay tuned!

If you have questions about intellectual property, tangible or intangible assets, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and 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.

LLC friendly states

Organizing Your LLC Intellectual Property Startup

Limited Liability Company – IP Startup

One or more Limited Liability Companies, can be be beneficial for Intellectual Property startups. As indicated in a prior blog, it is prudent for companies owning Intellectual Property rights to hold the Intellectual Property in a holding company and to have the goods/services associated with the Intellectual Property owned by a separate manufacturing/distribution company.

LLC Organization and Tax Law

Should organizers of a Limited Liability Company seek the advice of a tax professional prior to organization the LLC?  Yes.

Business Patent Law, PLLC does not provide tax counsel. However, with the ever-changing tax codes, organizers should consult with a tax professional. If an inappropriate jurisdiction is initially selected for the organization of the LLC, it may not be cost-efficient to redo the LLC’s organization in another jurisdiction.

Limited Liability Companies are Legal Entities

Limited Liability Companies are legal entities of the state (or District of Columbia) in which the LLC is organized.

For a Limited Liability Company with all members domiciled in the same jurisdiction, some states offer more owner friendly in-state taxation and fees to the citizen-members than other states.

You should review a state’s securities laws (and jurisdictional fees associated with the capitalization of the LLC) to determine if a state other than your home state may be better for the organization of the LLC.

As a general rule, a Limited Liability Company is treated as a pass through entity for federal income taxation purposes.

Where Should I Organize my LLC?

Where Should the Organizers Organize a Limited Liability Company? It depends

  • The nature of the LLC’s business can affect which jurisdiction is more favorable, e.g., some jurisdictions provide favorable state and local tax preferences for certain businesses
  • Some jurisdictions are more organizational, fee and tax-friendly than other jurisdictions
  • Management of an LLC can find it advantageous to organize in a first jurisdiction and locate the LLC’s principal office in a second jurisdiction
  • Some jurisdictions require out-of-state members to pay jurisdictional taxes in the jurisdiction where the LLC is organized or conducts business while other jurisdictions do not tax out-of-state members

Business Patent Law, PLLC has a history of working with tax professionals to optimize the organizational structures of LLCs. Because of our experience with different jurisdictions, Business Patent Law, PLLC (in conjunction with a trusted tax professional) can create a workable organizational structure for LLCs.

If you have questions about the organization of a Limited Liability Company or  Intellectual Property matters, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and 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.

Patent Maintenance Fees & Annuities

Patent Maintenance Fees and Annuities

In most jurisdictions, utility-type Patents require that periodic patent maintenance fees or annual annuities be paid to maintain the Patent. These payments are usually made to the appropriate governmental body. Most jurisdictions, other than the United States, also require the payment of annual annuities.

United States Patent Maintenance Fees

Title 15 of the United States Code requires the owner of a utility US Patent to pay maintenance fees at three and one-half, seven and one-half and eleven and one-half years subsequent to the issue date of the US Patent.

What Happens if the US Patent’s Maintenance Fee Is Not Paid?

The Patent will expire if the fee is not paid prior to the expiration of the fourth, eighth or twelfth year subsequent to the issue date of the Patent.

An Example Case: Unpaid Patent Maintenance Fees

Due to a Programmer’s Error, Company A did not Generate the Payment for the Seven and One-Half Year Maintenance Fee for Company A’s US Patent for “Gizmo.”

At this point, Company B approaches Company A regarding a license of the “Gizmo” Patent. Is it possible for Company A to enter into a Valid License Agreement with Company B?

Scenario 1

Seven years and nine months subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.362(e), by paying the maintenance fee and the surcharge during the “grace period,” Company A and Company B can enter into a license for the Gizmo.

Scenario 2

Nine years subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.378, by filing a petition with the Director of Patents stating that the failure to pay the maintenance fee was unintentional, paying the USPTO fee for the petition and the required maintenance fee, the Director may reinstate the expired Gizmo Patent. As a general rule, the Director usually reinstates an expired Patent as long as these above mentioned conditions are met before two years subsequent to the expiration of the Patent.  Subject to any intervening rights, Company A and Company B can enter into a license for the Gizmo.

Scenario 3

Ten and one-half years subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.378, by filing a petition with the Director of Patents stating that the failure to pay the maintenance fee was unintentional, paying the USPTO fee for the petition and the required maintenance fee, the Director may reinstate the expired Gizmo Patent. As a general rule, after two years subsequent the expiration of a Patent, the Director exercises more discretion in reinstating any expired Patent. Subject to favorable decision by the Director to reinstate the Patent and any intervening rights, Company A and Company B can enter into a license for the Gizmo.

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

Multijurisdictional Patent Infringement World Patents

Multijurisdictional Patent Infringement

Patent Cooperation Treaty Patent Applications have the potential to mature into Patents in most nations, but currently, there is no enforceable World Patent. Unaddressed Patent infringement can reduce your company’s profits.

Patent Rights in Multiple Jurisdictions

Many companies own patent rights in at least some of the jurisdictions in which they conduct business.

What If We Don’t Own Patent Rights in Jurisdictions Where We Do Business?

A frequent multijurisdictional situation is:

My Company owns ten US Patents, three European Patents, five Chinese Patents and three Japanese Patents. The Patents cover the company’s fifth most profitable product.

At a tradeshow in Singapore, our regional vice president discovers that a Vietnamese company has duplicated our invention and is exporting the duplicated invention to Australia, Canada and Japan. Further, the Vietnamese company intends to export the invention to Germany and the United States.

What Can You Do About “Knock offs” of Your Product Overseas?

As a general rule, Patent rights are only enforceable in the jurisdiction that granted the Patent.

  • In Australia and Canada, your company owns no Patent Rights and cannot stop the importation and use of the knock off in those jurisdictions
  • If Germany is one of the European nations covered by the European Patents, then your company can utilize European counsel to assert its Patent rights in Germany
  • In Japan, your company can use Japanese counsel to enforce its Japanese Patent rights
  • In the United States, your company can utilize US counsel to enforce its Patent rights that can include a court order to stop the knock offs at the port of entry

In the global economy, when another determines that your Company’s product is profitable, it is almost inevitable that someone will attempt to “bend the rules” and trade on your Company’s market share and goodwill for their own financial gain. Without Patent rights, you have little to no recourse in most jurisdictions.

What Should My Company Do To Prevent Patent Problems?

It is astute to procure Patent rights in all jurisdictions where your business plan, business model, actual and projected market forces justify the procurement of intellectual property.

A small front-end investment in intellectual property can reap increased future multijurisdictional sales.

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

Federal Registration of Trademarks

Federal Registration – Trademarks/Service Marks

Is Federal Registration of My Company’s Trademark/Service Mark required?

No.  However, if the company’s Trademark/brand is not registered, it becomes more difficult to enforce the company’s rights associated with its brand. If a federal Registration is not procured, then the owner of the Trademark/Service Mark must rely on State or common law precepts to prove infringement.

Federal Registration Advantages Include:

  • The symbol “®” can be placed in proximity to the Trademark/Service Mark giving notice the Trademark is registered in the United Patent and Trademark Office
  • Substantive and procedural rights attributable to federal jurisdiction (rather than using a state’s law to control adversarial proceedings)
  • Prevention of the registration of another Trademark/Service Mark in the United States Patent and Trademark Office that is confusingly similar
  • Creates a basis for international Madrid Protocol Trademarks/Service Marks
  • Constructive notice of ownership and date of first use in interstate or international commerce

Wise Business Owners Procure Federal Registration Because:

  • Over time, the Trademarks/Service Marks can mature into the company’s most valuable asset
  • Trademarks/Service Marks are foundational components of most franchise agreements
  • Trademark/Service Mark licenses can provide a royalty stream for the registrant
  • If your company does not procure a United States Trademark, another company can procure a federal Registration of your company’s Trademark and limit your company’s usage of its brand to the geographic areas in which your company’s use was prior to the registering  company’s use of your brand name
  • After five years of continuous use, your company’s federal Registration becomes incontestable, unless one or more of nine statutory defenses can be proved by the party contesting your company’s United States Trademark/Service Mark

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