The post How Long Does A Trademark Last in the US? appeared first on Patentably Defined.

The post Should You Put LLC in Your Logo? appeared first on Patentably Defined.

The post Why It’s Best To Form an LLC Before Applying for a Trademark appeared first on Patentably Defined.

The post Explaining Trademark Lookups appeared first on Patentably Defined.

The post The Differences Between Trademarks and Copyrights appeared first on Patentably Defined.

The post The Trademark Timeline appeared first on Patentably Defined.

The post Our Trademark Registration Services for DC-Based Businesses and Brands appeared first on Patentably Defined.

The post Choosing Between Trademark Symbols for Your Mark appeared first on Patentably Defined.

1. This is a useful post about how to trademark your YouTube Channel
2. This is a helpful post offering 7 great ways to brand your YouTube Channel
3. This post answers the question”Can You Trademark a YouTube Channel Brand?“
4. This post explains why you cannot Copyright a YouTube Channel Name

The post Trademarks and YouTube: How to Use Trademarks to Protect a YouTube Channel Brand appeared first on Patentably Defined.

The post UseFul Trademark and Copyright Information and Tips appeared first on Patentably Defined.

The post Some Useful Information About Trademark Symbols appeared first on Patentably Defined.

Trademarks protect brands. They are the foundation of every successful brand.

The single best way to do that is with a Federal trademark registration.

Here are seven practical reasons why you need to get a Federal trademark for your brand.

1. Enhanced Protection on Social Media
2. Enhanced Protection on the Web
3. Access to Brand Registries Like Amazon’s Brand Registry
4. Invest in Your Brand with Confidence
5. Stand Out in a Crowd With the ®
6. Better Social Media Results
7. Instant Credibility

          Bonus Reason: Easier and Less Expensive Marketing

Reason #1 — Enhanced Protection on Social Media

Social media services like Facebook, Instagram, and Twitter have policies in place to protect brands against abuse – provided that you can establish ownership. A Federal trademark makes establishing ownership a mere formality.

Reason #2 — Enhanced Protection on the Web

A trademark is an exclusive right to use your name or logo. This means you’re the only one who can use it in your industry. When you secure a domain that includes your trademark, all of the legal protections and presumptions that accompany Federal trademarks apply to your web address.

Reason #3 — Access to Brand Registries Like Amazon’s Brand Registry

The Amazon Brand Registry is an important and powerful brand protection tool. When you enroll, Amazon will look for and stop trademark violations. Amazon’s Brand Registry is limited to Federal trademarks, however.

Reason #4 — Invest in Your Brand with Confidence

Trademarking your brand gives you the exclusive and nationwide right to use it for your brand.  This means you won’t risk having to rebrand. So, you can confidently invest in your website, business cards, and marketing.

Reason #5 — Stand Out in a Crowd With the ®

Only owners of Federally registered trademarks are legally permitted to use the ® sign. This symbol is an attention grabber, in both the offline and online worlds.

Reason #6 — Better Social Media Results

Customers are searching, tagging, and commenting on brands using Facebook, Twitter, and Instagram more than ever. A memorable trademark translates into greater visibility, which translates into higher rankings that bring more traffic, more customers, and more brand recognition.

Reason #7 — Instant Credibility

Only Federal trademark registration gives you the legal right to use the ® symbol, which tells the world that you take your business and brand seriously. Plus, the ® has been shown to validate the confidence your customers want to have in you. Every company (young or old) can do with some instant credibility, right?

Bonus Reason: Easier and Less Expensive Marketing

Science confirms that humans are hardwired to process information visually. Studies have shown that humans have evolved to receive 90% of all information visually. That’s “a picture is worth a 1000 words” and why trademarks matter. They are the single best way to incorporate visual marketing in both the online and offline worlds.

Why wouldn’t you protect your good name and hard work?

Building a business that proudly offers quality products takes enormous amounts of hard work, dedication, and courage. The effective branding of those products also takes valuable time and creativity. Doesn’t it just seem right to protect that effort and investment? After all, think of the sales you might lose if another company opened up using your same name.

Plus, rebranding will be expensive

At some point, you might face a challenge from a competitor over your brand. If you don’t take the necessary steps to clear and register your trademarks, you could find yourself in a battle that you don’t want to fight. Rebranding is a nightmare that can be avoided by thinking ahead and acting earlier rather than later.

In the end, it comes down to this:

If you’re serious about your business and your brand, then you need to protect them. A Federal trademark registration is the single best way to do that.

DC Trademark Attorney

Amazon Best-Selling Author • 20+ Years Experience • Member, Bar of the U.S. Supreme Court

2500+ Trademarks and Patents

The post Seven Practical Ways Federal Trademarks Help Your Brand appeared first on Patentably Defined.

The post Seven Legal Ways Federal Trademarks Help Your Brand appeared first on Patentably Defined.

By constructing an entirely new website and migrating to our new domain, we’ve been able to enhance the user experience by improving navigation and overall functionality.  We invite you to visit.

Once again, that URL is: http://www.mekiplaw.com.

© 2020, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Trademark Attorney 
www.mekiplaw.com

The post Announcing Our New Website and Home on the Web! appeared first on Patentably Defined.

In the U.S., it is well-settled, blackletter law that the simplicity of a claimed invention is not adverse to its patentability. See:

• Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944)(simplicity of itself does not negate invention)
• Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1390-91 (Fed. Cir. 1998) (“Nor does the patent statute require that an invention be complex in order to be nonobvious”);
• In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) (simplicity is not inimical to patentability); and
• Van Veen v. United States, 386 F.2d 462, 465 (1967) (“It is incorrect to hold that an invention was obvious when made, simply because the invention is simple in nature and is easily understood when described in a patent specification.”).

Indeed, the simplest inventions are often the most innovative.

• Van Veen, at 465 (“Experience has shown that some of the simplest advances have been the most nonobvious”).

This is because the simplicity of an invention may constitute great excellence and value.

• Reiner v. I. Leon Co., 285 F.2d 501, 504, (2d Cir.1960), cert. denied, 366 U.S. 929 (1961) (simplicity of construction can reflect a patentable technological advance and/or an economy of production).

In sum, the patentability (novelty or nonobviousness) of a claimed invention is separate and distinct from the complexity of that invention.

© 2013, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Trademark Attorney 
www.mekiplaw.com

The post The Nonobviousness of “Simple” Inventions appeared first on Patentably Defined.

Section 707.02 of the MPEP

Section 707.02 of the MPEP, entitled Applications Up for Third Action and 5-Year Applications, states:

The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.

The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.

Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.

In recent years, the USPTO appears to be taking the guidance of MPEP § 707.02 more seriously – going so far as to specifically suggest in Examiner training materials some ways that Examiners might help their SPEs in these situations. For example, in its “Best Practices In Compact Prosecution Awareness Workshop” available here, the USPTO suggests that Examiners:

(1) inform their SPE when preparing  a third or subsequent action on the merits;

(2) make every effort to resolve/simplfy issues for appeal; and

(3) use telephone interview practice.

Example of How to Use § 707.02 of the MPEP

The following is an example of how one may use § 707.02 of the MPEP in a written response.

Formal Request to the Supervisory Patent Examiner Pursuant to MPEP § 707.02  

Applicants are presently responding to a third Office action on the merits.  Section 707.02 of the MPEP directs that the Examiner’s supervisor personally check on the pendency of this application, with a view to finally concluding its prosecution. Accordingly, Applicants formally request the personal attention of the supervisory patent examiner in this application and, in particular, the consideration of this response in light of the errors in logic and claim interpretation discussed herein.

A Few Additional Points

1.      The rationale behind MPEP § 707.02 can perhaps be found in MPEP § 706, which instructs that “[t]he goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity.

2.     Under the principles of compact prosecution, the examiner should review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application. See 37 CFR 1.104(a)(1) (“On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application . . . with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.”)

3.     I discussed the Office’s policy of compact prosecution in an earlier post after this link.

© 2012, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Trademark Attorney
www.mekiplaw.com

The post A Strategy To Speed Up The Prosecution Of Older Cases appeared first on Patentably Defined.

SUMMARY OF THE RULE – 37 CFR 1.27
37 CFR § 1.27 addresses both (i) when an Applicant must make a determination of entitlement to small entity status and (ii) when the USPTO must be notified of a loss of entitlement to small entity status. The Rule provides the following:

1. Only one assertion is required to establish small entity status and that once established small entity status remains in effect until changed. (37 CFR § 1.27(e)(1));

2. A new determination of entitlement to small entity status is needed when Issue and Maintenance Fees are due. (37 CFR § 1.27(g)(1));

3. After small entity status has been established, small entity fees may properly be paid thereafter without regard to a change in status until an Issue or Maintenance Fee is due. (37 CFR § 1.27(g)(1)); and

4. Notification of loss of entitlement to small entity status is required when Issue and Maintenance Fees are due and must be in writing – payment of a fee in other than the small entity amount is not sufficient notification. (37 CFR § 1.27(g)(2)).

Thus, an Applicant is only required to make a determination of entitlement to small entity status at three specific times during the patenting process. The first is at the time of filing. The second is with payment of the Issue Fee. The third is when any Maintenance Fee is due.

THE PRACTICAL RESULTS OF THE RULE
In practice, the scheme established by Rule 27 yields some very Applicant-friendly results.  Consider the following:

1.  An Applicant need not notify the USPTO of a change in entity status until the payment of the Issue Fee, regardless of when the status change occurred.

2.  Also, an Applicant who no longer qualifies as a small entity need not pay large entity fees until payment of the Issue Fee, regardless of when the status change occurred.

Stated differently, once small entity status has properly been established, an Applicant may continue to pay small entity fees until payment of the Issue Fee, even after the Applicant would no longer qualifies as a small entity.

A FEW ADDITIONAL POINTS
1. Section 509.03 of the Manual of Patent Examining Procedure (MPEP) addresses the mechanics of claiming small entity status and should be a primary resource.

2. The USPTO treats payment of the small entity basic filing fee or the basic national fee with a new application as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error. 37 CFR 1.27 (c)(3).

3. Status as a small entity must be specifically established by a separate, written assertion in each related, continuing, and/or reissue application. 37 CFR 1.27 (c)(4).

Additional Content You Might Like

• • Trademarking a Restaurant Name (link)
  • Metaverse Brand Protection (link)
  • Guide to NFTs and Trademarks (link)

© 2022, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
Trademark Attorney DC 
www.mekiplaw.com

The post What To Do When An Applicant’s Entity Status Changes During Prosecution appeared first on Patentably Defined.

Logically, some art citations are from fields of endeavor that are so remote or diverse from a claimed invention that it would be unreasonable to presume that a person of ordinary skill would know of them or even be motivated to look to them. Art that is this remote or diverse is said to be “non-analogous,” does not qualify as prior art under 35 U.S.C. § 103, and cannot support an obviousness rejection. Accordingly, the question of whether an art citation is “analogous” to the claimed subject matter (and thus qualifies as prior art under 35 U.S.C. § 103) is often an important threshold inquiry.

BRIEF SUMMARY OF RELEVANT LAW
1.  Art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004); In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA 1979).

2.  In order to be “reasonably pertinent,” art must “logically commend itself” to an inventor’s attention in considering his problem. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP § 2141.01(a).

3.  A rejection under 35 U.S.C. § 103 cannot be based on non-analogous art. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. 2011); In re Bigio, 381 F.3d at 1325; In re Clay, 966 F.2d at 658.  The rationale behind this rule is a simple one – no inventor could possibly be aware of every teaching in every art. In re Wood and Eversole, 599 F.2d at 1036. Also, when art is directed to a different purpose then a claimed invention, an inventor would have less motivation or occasion to consider it.  See In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992); In re Clay, 966 F.2d at 658-59.

4.  In recent years, the efficacy of non-analogous art arguments has been called into question. The Federal Circuit, however, has confirmed that a reference qualifies as prior art only when it is analogous to the claimed invention. See In re Klein, 647F.3d 1343 (Fed. Cir. 2011); Innovention Toys, LLC, No. 2010-1290, slip op. at 12.

The following is an example of a challenge to the propriety of an art citation on the grounds that it is non-analogous.

Example
Applicant respectfully submits that the Smith patent does not qualify as prior art under 35 U.S.C. § 103 because it is not analogous to the invention of claim 1, as presently presented.

It is beyond dispute that the Office may only rely on analogous art to support an obviousness rejection. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). And, while the scope of analogous prior art may sometimes be wide, the Federal Circuit has confirmed that it is not without limit. See In re Klein, 647F.3d 1343 (Fed. Cir. 2011)(reversing the BPAI’s judgment of obviousness after concluding that no less than five prior art references relied upon by the BPAI were non-analogous).

The test for analogous art is very specific. Art is non-analogous unless it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor.  In re Bigio, 381 F.3d at 1325; In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA 1979). Thus, an art citation that is not from the same field of endeavor as a claimed invention MUST be “reasonably pertinent” to the problem addressed by the inventor. Art is “reasonably pertinent” when it would “logically commend itself” to an inventor’s attention in considering his problem. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP § 2141.01(a). Conversely, when art is directed to a different purpose then a claimed invention, an inventor would have less motivation or occasion to consider it. See In re Clay, 966 F.2d at 658-59.

Turning to the present rejection, Applicant notes the Office’s concession that the Smith patent and the device of claim 1 are not directed to the same field of endeavor. (Office Action, page 4). Indeed, there can be no reasonable dispute that Smith’s drawer organizers are not in the same field of endeavor as tissue sample testing. Therefore, the issue here is whether the Smith patent is reasonably pertinent to the problem addressed by the Applicant. Applicant submits that it is not.

Applicant does not dispute the Office’s characterization of the problem being addressed, –namely controlled mixing of liquid samples in various compartments that are customizable via movable dividers. (Office Action, page 5). Rather, Applicant respectfully submits that the Smith patent is not reasonably pertinent because it neither (1) addresses the same problem nor (2) serves the same purpose as the device of claim 1. Thus, the Smith patent would not have logically commended itself to the Applicant’s attention. See In re Clay, 966 F.2d at 659 (when a reference “is directed to a different purpose, the inventor would accordingly, have had less motivation or occasion to consider it.”).

The Smith patent is directed to a container that is designed to separate its contents, as opposed to one designed to facilitate the mixing of those contents. Indeed, Smith expressly teaches insertable partitions for the purpose of keeping drawing implements and the like separated. Thus, the purpose of the device of the Smith patent is to separate solid objects and to keep them separated, which is a solution to a problem very different than that addressed by the Applicant.

Stated differently, an inventor considering the problem of “how to prepare multiple ratios of a tissue sample to a testing fluid in a single platform” (Specification, paragraph [0018]) would not have been motivated to consider the Smith patent when making his invention, particularly since Smith does not show a partitioned container that is adapted to (1) receive a fluid, (2) permit mixing of a retained fluid, or (3) contain a fluid long enough to be able to prepare desired, different ratios in the different compartments. Accordingly, it would be unreasonable to conclude the presently presented claim 1 and the Smith patent relates to the same problem or serves the same purpose.

In sum, the Smith patent is non-analogous to the claimed invention, does not qualify as prior art under 35 U.S.C. § 103, and cannot support the rejection of independent claim 1 under 35 U.S.C. § 103.

AN ADDITIONAL NOTE FOR PHYSICS AND CHEMICAL CASES
An underlying similarity in a scientific principle of operation does not ipso facto mean that art from a field of endeavor would be relevant to another solely because that principle had been applied in the other field. Stated differently, the mere application of a similar scientific principle of operation in another field of endeavor is not enough to transform otherwise non-analogous art into analogous art. See In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).

The following is an example of the application of this principle in a traversal.

Example
Even accepting, arguendo, the Office’s contention that there is some similarity of a scientific principle at some underlying level, that similarity does not answer the question of whether a widget designer would have looked to the Smith patent for an answer to the problem of dimensional stability. Stated differently, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields. Here, the decision in In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967), is illustrative.

In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967). “Considering the facts of record, we are of the view that appellants, in view of the conditions set forth in section 103, are not chargeable with the knowledge set forth in the cutlery art.” (Id.)

A FEW ADDITIONAL POINTS
1. Arguments about whether cited art is analogous are irrelevant to anticipation rejections under 35 U.S.C. § 102. See MPEP § 2131.05.

2. A fundamental step in any determination of whether an art citation is analogous is to identify the problem addressed by the inventor.

3.  The USPTO recently issued a memorandum to its Examiners on the subject of analogous art.  Follow this link to download a copy.

© 2012, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney 
www.mekiplaw.com

The post The Analogous Art Requirement and How to Traverse Obviousness Rejections Based on Non-Analogous Art appeared first on Patentably Defined.

• The USPTO’s Sample Format For Amendments (pdf)
• The USPTO’s Patent Prosecution Highway Information Page
• The USPTO’s E-Office Action Program Information Page
• The USPTO’s Current Fee Schedule
• The USPTO’s Forms Page
• The USPTO’s Electronic Document Exchange Program Page
• The USPTO’s Organization Telephone Directory
• The USPTO’s Personnel Locator
• The USPTO’s Ombudsman Pilot Program Page
• The USPTO’s Public Notices Page
• The USPTO’s National Stage Application Information/Forms Page
• The USPTO’s Patents Information Page
• The USPTO’s PCT Legal Administration Page
• The USPTO’s Searchable Assignment Database
• The USPTO’s Office of Enrollment and Discipline Page
• USPTO Mailing and Hand Carry Addresses

Additional Resources/Related Links
1.  37 CFR 41.12 “Citation of Authority” – How to cite court decisions
2.  The USPTO’s Editorial Standards Page
3.  The Legal Framework for EFS-Web
4.  The USPTO Office of Data Management Page – Corrections of patents, applications, requesting duplicate letters patents

If you like this post, why not grab the RSS feed or subscribe by email and get the latest updates delivered straight to your news reader or inbox?

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

The post A Collection Of Useful USPTO Resources From USPTO.gov appeared first on Patentably Defined.

Update Your Bookmarks
EFS-Web and Private PAIR will have the following new URLs beginning on Monday, January 31, 2011.

1.    EFS-Web for Registered eFilers:  https://efs.uspto.gov/efile/myportal/efs-registered

2.    EFS-Web for Unregistered eFilers:  https://efs.uspto.gov/efile/portal/efs-unregistered

3.    EFS-Web Portal homepage:  https://efs.uspto.gov/efile/portal/home

4.    Private PAIR:  https://ppair.uspto.gov/epatent/myportal/privatepair

5.    Private PAIR Portal homepage:  https://ppair.uspto.gov/epatent/portal/home

The new URLs will not be active until January 31.  The URL for the USPTO’s homepage is NOT changing.  And, those users who access EFS-Web and Private PAIR using links on the USPTO’s homepage may continue to do so, because URLs on the homepage and EFS-Web and Private PAIR landing pages will be automatically updated.

On The Trademark Side …
The USPTO has finally assembled a list of all TEAS forms from each of the different form categories.  This list is on the front page of TEAS, after the hyperlinked word FORMS.

© 2011, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

The post A Few Recent USPTO Developments appeared first on Patentably Defined.