ENTREPRENEUR Archives - Page 2 of 2

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. Contact us to iron out your trademark concerns before you become a damsel in distress.

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS, START UP

PATENTED “WEED BREATHALYZER” COULD MAKE BILLIONS FOR CALIFORNIA COMPANY AS MORE STATES LEGALIZE THE USE OF MARIJUANA

Hound Labs, an Oakland, California company that was founded in 2014, has invented a breathalyzer machine that can detect recent use of marijuana by a person that may indicate that the person is impaired. With several states having already legalized or de-criminalized recreational use of marijuana, such a device would make our highways and roads safer by finding and punishing people who drive under the influence of marijuana in the same way as those who operate under the influence of alcohol. The availability of such a device may also lead to the rapid legalization of marijuana throughout the country.

The handheld device detects the presence of marijuana in a person’s lungs. Its operation is simple – for two minutes a person breathes into the handheld device, which is reportedly a billion times more sensitive than an alcohol breathalyzer. The breath that the handheld device collects in a cartridge is loaded into another machine for analysis. After about ten minutes, the machine will tell you whether there is marijuana in a person’s breath that would suggest that they have used marijuana recently. Testing the breath appears to be a far better indicator of whether someone is “high”, as it tests whether someone has used marijuana in the past two or three hours – the time that correlates with the greatest level of impairment. The device is also capable of detecting vaped or ingested cannabis.

Hound Labs has reportedly raised $65 million and has already secured nine U.S. Patents on its invention, with at least two more applications pending. The “weed breathalyzer” was recently featured in Newsweek and on The Today Show, where it was mentioned several times that the device will be expensive. But with law enforcement looking for better ways to keep the streets safe from impaired drivers, it’s a good bet that many will invest in the devices as marijuana use increases due to legalization. Assuming Hound Labs was able to secure relatively broad protection for the invention with its patents, it could be the sole supplier of “weed breathalyzers” to police departments across the country for the next 20 years! What a great example of how to use intellectual property to make money and grow a business while also providing a needed and valuable service to the community!

Do you have the next billion dollar idea? If so, you should consult with an attorney who specializes in intellectual property protection early in the process and develop a strategy to best protect your idea and business. We help clients do just that all the time. Contact us to see how we can help you.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS

Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.

In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.

The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.

Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.

It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).

The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.

Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS, START UP

ENERGY AND SUSTAINABILITY INNOVATIONS THAT ARE MAKING AN IMPACT

Being named an Edison Award winner is one of the highest honors a company can receive in the area of innovation. On April 5, 2019, Edison Universe announced the 2019 winners of the awards for game-changing innovations in fifteen separate categories. In recognition the 49th anniversary of Earth Day on April 22, 2019, we have decided to feature some of the Edison Award winning ideas in the area of Energy & Sustainability.

AGT Hybrid Greenhouse by Ancon Development Corporation

Ancon Development Corporation’s patent-pending Hybrid Greenhouse Design uses the cool air drawn from the earth to naturally cool and moderate the greenhouse temperature. This can significantly reduce energy consumption and bills by up to 80%. For new greenhouse constructions, this means a vastly reduced carbon footprint for cities.

LG DUAL Inverter Smart wi-fi Enabled Window Air Conditioner

LG Electronics is the first to offer variable-speed compressor room air conditioners in the US. These models constantly adjust speed, maintaining desired temperature and greater energy efficiency of 25 to 40 percent, depending on the model. LG is the first to earn the 2018 ENERGY STAR®Emerging Technology Award for the product.

View Dynamic Glass

Natural light is needed to live a healthy and productive life, but the ordinary window is not optimized to provide it. View’s smart glass windows let in natural light and views, and enhance mental and physical well-being by reducing headaches, eyestrain, and drowsiness. They also reduce glare and heat, improving the energy efficiency by up to 20 percent.

ENGAGE™ PV Polyolefin Elastomers

The Dow Chemical Company’s ENGAGE™ PV Polyolefin Elastomers (POEs) are high performance resins designed for photovoltaic (PV) encapsulant films. ENGAGE™ PV POEs have superior electrical resistivity and weathering stability that enable affordable renewable energy by increasing the reliability and lifetime of PV systems.

These winners of the Edison Award have looked at problems within the community and have come up with innovative solutions. Do you know of an innovation that is worthy of recognition? Nominations for the 2020 Edison Awards will open August 1, 2019 and close in late November. Winners are announced at the Edison Awards Gala in New York, NY in April 2020.

Before getting too far down the road, it’s important to identify and protect any intellectual property (patents, trademarks, copyrights and/or trade secrets) associated with your student’s innovative product or service. Contact us today to see how we can help you identify and protect these valuable assets.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

RESPONDING TO A REFUSAL TO REGISTER A TRADEMARK BASED ON DESCRIPTIVENESS

Even if the mark you are attempting to register is different enough from other registered marks such that there is not a likelihood of confusion between your applied for mark and a registered mark, registration may be refused if the mark is not distinctive. Distinctiveness of a mark generally lies on a spectrum, with inherently distinctive marks (registerable) on one end of the spectrum, and generic marks (unregisterable) on the other end. Inherently distinctive marks include those marks that are fanciful (made up terms such as EXXON, GOOGLE, ADIDAS), arbitrary (words that have no relation to the product or service such as APPLE for computers), or suggestive (words that provide a hint to a particular quality or feature of the product or service). Inherently distinctive marks are registrable without proof of acquired distinctiveness. Generic marks ( such APPLE for the fruit) are those words that are commonly used to identify the product or service, and as such are not registerable. Somewhere in between lie descriptive marks – those marks that describe a characteristic of the goods or services. Descriptive marks are only registrable if they have acquired distinctiveness or secondary meaning.

One of the more common grounds for rejection of an application for registration of a trademark is that the mark is “merely descriptive” of the trademark owner’s goods or services. In response to an initial (first office action) descriptiveness refusal issued against an application, the trademark owner has four options: (1) file a response to the office action arguing that the mark is inherently distinctive, (2) accept that the trademark is descriptive and provide evidence that it has “acquired distinctiveness”, (3) accept registration on the Supplemental Register, or (4) abandon the application. The decision on which of these options is best depends on the descriptiveness of the trademark, the length of use, the past sales and marketing, and the trademark owner’s budget. However, each of these has its hidden weaknesses that a trademark owner should discuss with an experienced trademark attorney before making their decision.

Filing a Response to the Office Action Arguing the Mark is Inherently Distinctive

The line between descriptive marks and suggestive marks is often blurry and an experienced trademark attorney can assist you in determining (and arguing to the Trademark Office on your behalf) on which side of the line your mark falls. There are a number of decisions out there where Federal Courts and/or the Trademark Trial and Appeal Board (TTAB) have established guidance as to where that line should be drawn in certain situations. An experienced trademark attorney can apply that law to the facts of your application and, in some cases, can make an effective argument that your mark is suggestive (registerable) rather that descriptive (not registerable). If there is a possibility of overcoming the rejection, this option should always be on the table and included in a response to the office action.

Submitting Evidence of Acquired Distinctiveness

Another option in responding to a rejection based on alleged descriptiveness is to submit actual evidence that the applied-for mark has acquired distinctiveness in connection with your goods or services. This can be done alone, or in combination with a response arguing that the mark is inherently distinctive. Acceptable evidence of use can include:

advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
dollar figures for advertising devoted to such promotion;
dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Unless your mark is extremely descriptive, if it has been in use for five years or more, the trademark office will generally allow trademark owner to claim acquired distinctiveness under the Lanham Act’s five-year presumption by filing an affidavit attesting to five years use with no additional evidence. If the trademark is extremely descriptive or if it hasn’t been in use for five years, the trademark owner can provide evidence of customer affidavits, sales, advertising, earned media and more to show that it has met this threshold.

Registering on the Supplemental Register

Another option would be to accept the trademark examiner’s assertion that the mark is merely descriptive, but amend the application to seek registration on the Supplemental Register. However, marks registered on the Supplemental Register do not receive all the protections given to those registered on the Principal Register. Specifically, placement on the Supplemental Register does not provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation, does not support a later claim of incontestable status, does not imply the right to exclusive use of the mark, nor does it allow the mark owner to request exclusion of imports by the Bureau of Customs. It does allow the registrant to use the federal registration symbol ® and it serves as a bar to subsequent registrations that would create a likelihood of confusion.

Abandoning the Application

While this may seem obvious, it is important to note that a trademark application may be withdrawn without prejudice at any time before it is adjudicated before the TTAB in an appeal. This means that a trademark owner may abandon its trademark application for any reason and file it again sometime in the future. This approach has a few clear drawbacks: the trademark owner will have no federal protection for their trademark and will have to rely on their common-law rights, which apply to the geographic area where a trademark owner can show it has trademark recognition of its mark. This will make enforcement of the trademark difficult and potentially expensive. There will also be a public record that the application was abandoned. This will not be a legal admission of any kind, but could provide an opposing party with additional ammunition in a legal dispute.

There any many factors to consider when deciding the best way to deal with a descriptiveness refusal. If a trademark is truly descriptive (i.e. there little to no chance of winning on an appeal), then providing evidence of acquired distinctiveness (if possible) or amending to the supplemental register may be the only way to gain any federal rights in the descriptive mark. However, for a company faced with this decision, it is always important to consider the long-term consequences. Remember that every huge company was once a startup facing similar decisions about their trademarks and a trademark registration is only as valuable as its owner’s ability to enforce it against potential infringers. A trademark owner should consider all of the options before making a decision that could affect the long-term strength and scope of their trademark.

ENTREPRENEUR, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS

U.S. PATENT & TRADEMARK OFFICE ISSUES TEN MILLIONTH PATENT

On June 19, 2018, nearly 228 years after the first U.S.patent was issued to Samuel Hopkins for a process of making potash, U.S. Patent No. 10,0000 was granted to Raytheon Company for Coherent LADAR Using Intra-Peel Quadrature Detection. I wonder if the Founding Fathers, including President George Washington who signed the first patent, ever thought we would reach this milestone.

In order to “promote the progress of science and useful arts”, at the Constitutional Convention in 1787 the founding fathers granted to “authors and inventors the exclusive right to their respective writings and discoveries.” From these words sprang a patent system that spurs innovation by granting temporary monopoly rights to inventors in exchange for their disclosure of their invention to the public. The inventor benefits from the right for 20 years to exclude all others from making, using, selling, offering to sell and importing their patented invention. In exchange, the public receives a detailed description of the inner workings of the invention, which often times leads to further innovations and improvements.

It has long been rumored that, in 1899, then Commissioner of Patents Charles Holland Duell said “everything that can be invented has been invented.” Mr. Duell served as the twenty-fifth Commissioner of the United States Patent Office at the turn of the last century (from 1898-1901). There is little proof that Duell actually made this statement, and a number of authors have attempted to bust this myth over the years.

A quick look at Duell’s accomplishments as Commissioner of Patents would lead one to doubt that he made such a statement. His reports suggest that the Patent Office was experiencing significant growing pains during his tenure. Issues of office overcrowding, storing of soft copies of patents and a shortage of examiners to deal with the increased flow of applications appeared in his annual reports to Congress. Apparently Duell had some success in convincing Congress to fund the hiring of additional examiners when the wait time for a newly filed application to be examined was reduced to six weeks (according to current USPTO statistics, the wait time for a first office action is now 15.5 months!). The Division of Classification was also organized under Duell’s tenure to deal with a growing diversity of inventions.

A look at the state of industry and technology at the dawn of the 20th Century is further proof that no one in their right mind would have made such a statement at that time. By the end of the 19th century, the principles of generating electricity had been solved and production of electricity on a large scale was just ramping up. In 1899, German chemist Felix Hoffmann patented aspirin, and Bayer registered its name as a trademark. The petroleum industry was mounting a comeback as the trust creating the behemoth Standard Oil Company was formed in 1899. On August 5, 1899, Henry Ford resigned from the Edison Corporation and founded the Detroit Automobile Company. The founder of the Edison Corporation, Thomas Alva Edison was busy working on a number of inventions for which he was ultimately awarded 1,093 U.S. patents, including US Patent No. 425,761 which issued in 1900 for the Incandescent Lamp. Also in 1899, after Wilbur Wright had written a letter of request to the Smithsonian Institution for information about flight experiments, the Wright Brothers designed their first aircraft. In 1900, a 21 year old by the name of Albert Einstein became an assistant patent examiner at the Federal Office for Intellectual Property after graduating from the Eidgenössische Technische Hochschulethe in Zurich.

Without a doubt, the state of inventions and technology expanded at a meteoric rate in the first quarter of the 20th Century. At the end of 1899, a total of 640,166 patents had been issued in the then 109 year existence of the Patent Office. By the end of 1925 and additional 927,873 U.S. Patents had been issued. Patent No. 5,000,000 issued a mere 27 years ago when a then 23 year old by the name of Rick Martin was a patent examiner at the U.S. Patent & Trademark Office. While impressive, that rate of growth has continued to climb. At present, over 300,000 U.S. Patents are issued every year!

From this exponential growth, it is clear that the patent system has been instrumental in driving innovation. To celebrate this milestone, the USPTO unveiled a new patent cover design beginning with the 10 millionth patent and has prepared a multimedia presentation on the history of the US patent system. If history is any indication, we are nowhere near the point where “everything that can be invented has been invented.” In fact, at the current rate of growth, many of you reading this article will likely live to see the issuance of US Patent No. 20,000,000.

Do you have an idea for the next Process of Making Potash or Coherent LADAR? If so, contact us to discuss how we can help you protect these valuable assets!

ANGEL INVESTOR, ENTREPRENEUR, INTELLECTUAL PROPERTY, PATENTS, START UP

PITCH PERFECT – ARE YOU FORFEITING PATENT PROTECTION WHEN YOU PITCH YOUR IDEA TO POTENTIAL INVESTORS?

Since the debut of Shark Tank in 2009, a number of similar contests and competitions involving entrepreneurs publicly “pitching” their idea or invention to a group of people have arisen across the country. The general premise is that a select number of entrepreneurs have a limited amount of time (say 3 minutes) to pitch their idea to those in attendance. At the end of the evening a panel, or in some cases all those in attendance, vote for their favorite and awards are given for the best pitches. In some cases, seed money is awarded to the winning entrepreneurs to help move their project forward.

For the entrepreneur, making such a public pitch before filing an application for patent protection is potentially devastating. Securing patent protection for an invention provides a huge competitive advantage to a start-up – the ability to exclude all others from making, using, importing, selling or offering to sell your patented invention for up to 20 years. In many cases, without proper patent protection, the barriers to entering the market are so low that good ideas can be legally copied by those with market influence leaving the entrepreneur/inventor empty handed. The best way to avoid such a devastating loss – file at least a provisional patent application that provides “full disclosure” of your invention prior to making your pitch.

Prior to the America Invents Act (AIA), which took effect on March 13, 2013, inventors had a one-year grace period after a public disclosure to file their application for patent in the United States before that disclosure would be considered to be prior art barring issuance of a patent. The biggest change in the AIA was going from a “first to invent” system to a “first to file” system. Accordingly, if two patent applications are filed after March 13, 2013 claiming the same invention, the USPTO does not consider who was the first to “invent”, but rather who won the race to the Patent Office by filing first. An inventor who publicly pitches an idea before filing for patent protection runs the risk that someone in the audience will take that idea, modify or expand on it, and file for patent protection first, effectively precluding the pitching inventor from securing patent protection.

Another potential problem that may arise when an inventor pitches before filing is the subsequent re-disclosure of the invention by a third party. Consider the following common scenario – Inventor discloses her idea at a Pitch Competition on December 22, 2016. A third party who was in attendance presents his “improvement” to the original pitch to potential investors on July 10, 2017. Inventor files her provisional application on December 21, 2017. One would think that the one-year grace period clearly applies under these circumstances. However, the answer, as is often the case in the law, is not so clear cut.

Under the AIA, the inventor’s ability to overcome the July 10, 2017 third party prior art is significantly limited. First, in order to avoid the third party prior art, the inventor must first prove that the third party did indeed obtain the information form the inventor. If third party was in attendance at the December 22, 2016 presentation, proof of that may not be too difficult. However, as is often the case, the third party may have received the information indirectly such as from another person who was in attendance. As the link to the original presentation becomes more distant, it becomes more difficult to prove the third party’s disclosure was obtained from the inventor. If such a situation arises, affidavits must be prepared and filed with the USPTO during the prosecution of the patent application, adding significant time and cost to the process of obtaining a patent.

All of this can be avoided by simply filing an “appropriate” provisional application before the pitch is made. For the application to be “appropriate”, it must include a written description that enables a person of ordinary skill in the art to make and use the invention. Thus, while a provisional application can be a useful tool for establishing an early filing date, simply filing academic papers, white papers, inventor notes or anything else that may be lying around does not necessarily provide protection. Therefore, when filing a provisional application, it is a good idea to seek the assistance of a registered patent attorney or agent who is experienced and familiar with the written description requirement of the USPTO.

To further complicate the one-year grace period, it can often times be difficult to establish just exactly when the grace period begins. Clearly, pitching your invention at a pitch completion attended by the public would trigger the start of the grace period. But looking deeper, was there some other activity that you engaged in earlier that may have triggered an earlier start to the grace period? Has there been another earlier “public” disclosure of the invention or an “offer to sell” the invention? There are a variety of risks associated with reliance on the one-year grace period that make it easy for an inventor to misjudge the actual beginning and end dates of the grace period.

Lastly, if you have global aspirations for your invention (which you should), most other countries have no such grace period, and such prior public disclosures are considered to be an “absolute bar” to obtaining patent protection. Australia and Canada operate under a 12-month grace period similar to the United States. Japan, Europe and the UK operate under a 6-month grace period, but under very limited circumstances. The World Intellectual Property Organization (WIPO) maintains a for a number of countries throughout the world. The filing of an appropriate US provisional application prior to any public disclosure as discussed above effectively gives a one-year grace period from the date of filing to the inventor for purposes of pursuing foreign patents. A knowledgeable patent attorney will be able to devise a filing strategy to best fit the needs of any inventor.

Are you about to pitch your idea to potential investors and/or the public in a pitch competition and concerned about protecting your patent rights? If so, contact us to see how we can help BEFORE you pitch and potentially compromise your patent rights.

ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

Final Score on Issue of Trademark Disparagement: REDSKINS 8 USPTO 0

The 98th season of the National Football League (NFL) kicked off earlier this month with the Kansas City Chiefs defeating the defending Super Bowl LI champion New England Patriots 42–27. But before the season was even underway, the Washington Redskins scored a victory that may be more controversial than Deflategate, and is arguably more valuable to the Redskins franchise than the Patriots’ five Lombardi Trophies.

Earlier this Summer, in Matal v. Tam, a decision totally unrelated to the sport of football, the United States Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

Curiously, as was raised by the Redskins in an amicus brief filed in the Tam case, the PTO previously registered marks such as WHITE TRASH COWBOYS and OFF-WHITE TRASH for two all-white rock bands, and N.W.A. for an all-African American rap group, as well as a number of other marks that could be considered by various groups to be disparaging. In the majority opinion, Justice Samuel Alito found that trademarks constitute private speech—not government speech—and federal registration of trademarks does not convert such marks into government speech. Alito went on to conclude that, because trademarks are private speech, the government cannot choose which speech it finds offensive and which it does not find offensive without running afoul of the First Amendment.

Prior to this unanimous decision of the Supreme Court, the so called disparagement clause of the Lanham Act had authorized the PTO to refuse registration to, or even cancel a trademark if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group. In 2013, five Native Americans sought to cancel six (6) federal trademark registrations issued to the Washington Redskins between 1967 and 1990 on the ground that the registrations were obtained contrary to the disparagement clause of the Lanham Act which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In a June 2014 decision, the Trademark Trial and Appeal Board (TTAB) sided with the petitioners and canceled the marks because “they were disparaging to Native Americans at the respective times they were registered”. The Redskins organization has been pursuing appeals of that decision ever since, so the ruling has never gone into effect. In light of the Tam decision, it is expected that the Redskins will seek further review of the cancellation of their marks by the TTAB, and that those efforts will be successful.

While preservation of the federal trademarks is not required for the Redskins to continue use of the Redskins name, logos and marks, those registrations confer some significant benefits and advantages to the owner which would not otherwise be available without the registrations. Chief among those benefits is the exclusive right to use the marks in connection with the specified goods and services throughout the entire United States. Because the marks have been continuously in use and registered for more than five (5) years, they are considered to be “incontestible”, which, under normal circumstances, renders the marks immune from being challenged. Federal registration of a trademark also comes with the ability to utilize the services of the U.S. Customs and Border Protection Services to prevent infringing merchandise from entering the United States. Federal law also allows owners of federally registered marks to seek, and in some circumstances recover treble (3X) damages against infringers in certain circumstances.

The benefits conferred upon the owner of a federal trademark registration far exceed the time, money and effort invested in acquiring those rights. Most small businesses spend thousands of dollars or more each year on branding tasks such as logo creation, signage, social media, advertising and search engine optimization (SEO). If that branding strategy is not properly coordinated with a strategy to adequately protect the associated intellectual property rights, you may be throwing money away. At Martin IP Law Group, our approach is to work with clients to identify and protect their valuable intellectual property rights, including federal trademarks. If your business has an image and identity to protect (HINT: It does), contact us today to discuss how we can help you identify and protect these valuable assets in a way that will make your business stand out from the competition.

COPYRIGHTS, ENTREPRENEUR, PATENTS, TRADE SECRETS, TRADEMARKS

Student Inventions that are Making an Impact

Each year in April, Edison Universe celebrates student inventors with a contest that allows students to showcase their inventions for an opportunity to win one of several scholarships. Many students submitted entries, and the following three inventions were selected as student recipients of the 2017 Edison Award.

NOVA Personal UV Sensor

Invented by students Kali Watkins, Connor French and Brooke Mitchell of Park City, Utah, the NOVA Personal UV Sensor was developed to help prevent skin cancer and to help people develop healthy sun-exposure habits. The commercial version of the invention measures the sunburning portion of the UV spectrum. It allows the user to display UV index, dose rate, and daily accumulated dose. It is available online and sells for $375 at NovaLynx.

Intonation Portable Piano Keyboard

Piano keyboards, even the modern electronic versions, are bulky and difficult to store and transport. The Intonation Portable Piano Keyboard invented by students Hannah Chen and Seth Mazza of Peoria, Arizona can be broken down into designated segments for easy storage and transportation. Our search of the internet did not reveal any information regarding patents on this invention, nor did it reveal any commercially available version of the invention. However, there are a few videos on YouTube which suggest that others are working on similar concepts – Portable Piano First Prototype and Travel anywhere with real portable piano keyboard. Hopefully Chen and Mazza timely filed a patent application for their invention and a trademark application to protect that catchy name to protect their valuable intellectual property!

IKOS Toys

Park City, Utah is home to a program called CAPS, a hands-on engineering program that allows students to explore the real world during high school hours. It is also the home of the third 2017 student Edison Award winners who created IKOS™, a modular spherical construction toy for innovative kids of all ages. This innovative product has won multiple consumer awards, including Creative Child Magazine’s 2016 Puzzle of the Year and Product of the Year Awards. It is available online at IKOS Toys.

These student winners of the Edison Award have looked at problems within their community and have come up with innovative solutions. With the assistance of the Edison scholarship, they will be able to take their innovative spirit to the next level at the college of their choice.

Does your student have a great idea? The final deadline for 2018 Edison Award Nominations is November 17, 2017. To qualify for consideration, the product or service must be launched and available to end-users between July 1, 2016 and February 28, 2018. Winners are announced at the Edison Awards Gala in New York, NY in April 2008.