Who generally wins in a trademark dispute between a 1st common law user who has not federally registered their trademark vs a subsequent user of the same mark who has federally registered their trademark?
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Who generally wins in a trademark dispute between a 1st common law user who has not federally registered their trademark vs a subsequent user of the same mark who has federally registered their trademark?
A trademark specimen is evidence submitted to the United States Patent and Trademark Office (USPTO) to show that the mark has been used in the manner set forth in the trademark application. A proper specimen is required before registration. Specimens are submitted at the time of filing the application or, when the application is filed on an intent-to-use basis, with the Statement of Use after the application has reached allowance.
There are two categories of specimens: specimens for goods and specimens for services. Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, and displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services include signs, photographs, brochures, website printouts and advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
WORD OF CAUTION: When you have filed your application on an intent-to-use basis, it is important to submit proper specimens with your Statement of Use. If the specimen is rejected, you will need to submit a replacement specimen with an affidavit or declaration stating “The substitute specimen was in use in commerce prior to the expiration of the deadline for filing the Statement of Use.” TEMP §904.05 et seq. If you have no additional specimens that were in use prior to the deadline, your application will be refused.
It is important to have your trademark lawyer evaluate your specimens. Be sure to submit the specimens ahead of time so that your trademark lawyer can advise you on how to properly use your mark in order to create proper specimens.
You have a duty to inform the U.S. Patent and Trademark Office of any information you are aware of that is material to the patentability of your invention. The duty exists for each pending claim as long as the patent application is still pending. This includes information you discover during the entire application process. Although there is no duty to search for prior art, it applies to information you and/or your patent attorney are aware of.
A failure to abide by your duty of disclosure may result in the patent being found invalid. Furthermore, if inequitable conduct is found regarding the non-disclosure of a reference, the patent and related patents may be found unenforceable. Furthermore, inequitable conduct may be a basis for awarding the accused infringer attorney fees in litigation. Inequitable conduct involves a misrepresentation, failed to disclose material information, or submittal of false information to the U.S. Patent and Trademark Office with an intent to deceive the U.S. Patent and Trademark Office.
Information may be material if it relates to your invention and:
37 C.F.R. § 1.56 details your duty of disclosure. The duty is typically fulfilled by submitting an Information Disclosure Statement. Your patent attorney can analyze any documents and other information you are aware of to determine whether a disclosure is necessary.
When you properly disclose a reference and the reference is considered by the Examiner, there is a presumption of validity of your patent over the reference if the validity of your patent is challenged in court. This means that, because the Examiner was aware of the reference during his decision to grant the patent, the opposing party must show with clear and convincing evidence that the reference invalidates the patent.
The issue of inventorship is often raised during patent litigation. If the inventors are incorrectly stated, the patent being asserted is unenforceable. For this reason, a critical component of developing a valuable patent portfolio is to have a process for making sure that inventorship is correctly stated. Because claims change during the patent application process, inventorship is sometimes a moving target. Thus the best practice for nailing down proper inventorship is to examine the issue every time a change is made to the claims.
So who is an inventor? The inventor is the person who conceived of the idea that is claimed. Conception – not creation, is the cornerstone of inventorship. A person who merely implements an idea or supervises the implementation of it is not an inventor unless they contribute an enabling detail or improvement that ends up in the claims of the patent. A person who is hired to implement an idea is not an inventor by default. Moreover, the person in charge of the project is not automatically an inventor. In many cases, excluding a person’s boss, particularly when he or she was not involved in conception of the core innovation, is the correct move. Inventorship can get complicated when a person has an original idea, but lacks the expertise to enable the idea, thereby necessitating the need to hire someone to build the idea. In such cases, the person who was hired often contributes significantly towards enabling the idea and may provide additional concepts, making that person a co-inventor.
The bottom line with inventorship is that there are many nuances to consider and seeking the advice of a competent patent attorney is the best practice for making sure inventorship is correctly stated. Getting inventorship right is a critical to making a patent enforceable and having a process for making sure inventorship is right is a critical part of any intelligently executed intellectual property strategy.
As the inventor, we encourage you to submit images of your drawing to assist us in preparing the application. If the drawings are prepared in accordance with certain guidelines, the drawings can be used in the patent application, saving you time and money. After all, who better to translate your vision into a visual medium?
Black and White Line Drawings: Typically, black and white line drawings are preferred by the United States Patent and Trademark Office (USPTO). Drawings should consist of solid black lines sufficient to be reproducible in the printed patent. Color is used on rare occasion, but only after the applicant has successfully petitioned to the USPTO that use of color is the only practical means by which to disclose the invention. (Color drawings are not permitted in international applications or patent applications submitted by the electronic filing system.)
Exclude Text: Your patent lawyer will determine any text that should appear in a drawing. You may submit an annotated version and a clean version so that your patent lawyer may convert your drawing into appropriate formal drawings. Your patent lawyer will add all required information, including proper identification on the drawing sheets including the title of invention, inventor’s name, and application number, or docket number if the application number has not been assigned.
For more details on the above and other specific items relating to patent drawings such as scale, shading, symbols, legends, numbers, letters, reference characters, lead lines, arrows, or use of photographs, please see 37 C.F.R. §1.84 or MPEP §1.84 – Appendix R Patent Rules. We encourage you to read Section 1.84 before deciding whether to prepare the drawings on your own. If the standards prove too daunting, you can work on the drawings with your patent lawyer. Your patent lawyer may also opt to utilize a draftsperson that specializes in your type of invention. There are several draftspersons available here in Los Angeles who specialize in patent drawings.
Are you thinking about patenting your invention? Whoever invents, discovers or improves a process, machine, manufacture or composition may be eligible for a patent. When you are ready to discuss your idea with a patent lawyer, you will save time and money if you are prepared. We are providing the Invention Disclosure Form below for informational purposes. The form will help you flesh out your idea and collect relevant information that your IP lawyer will need to best service you. If you are in the Los Angeles area, please consider us to help you obtain and protect your intellectual property rights.
Click here to download an Invention Disclosure Form.
When hiring an outside person to design a web page, logo, take photographs you plan to use in promoting and selling your product, or create any other type of creative work, it is imperative you address copyright ownership. By default the author of the work owns it. If you are a company hiring an outsider to create works for you, agreements are needed to change this default rule.
If the work has not been created yet you need to have the creator execute a Work for Hire Agreement. A sample of one is provided below for your reference and use.
If the work is done already don’t bother with the Work for Hire Agreement as it’s completely invalid. What you need in this scenario is to have the creator of the work execute a Copyright Assignment to transfer ownership from the creator to you the purchaser. Don’t make the mistake of thinking that simply because you paid someone to create the work that you own the copyright. Unless that person is an employee (which means the creation is automatically a Work for Hire) you don’t own rights without the assignment. A sample Copyright Assignment is provided below.
Please note that although we are providing these samples contracts we are not acting as your lawyers. There are situations where these forms should be substantially modified and before putting them into use you should consult your lawyer. If you need a copyright lawyer in Los Angeles we’d be happy to help out.
Click here for a sample Work for Hire Agreement
Click here for a sample Copyright Assignment
Check this out and learn what can happen if you don’t challenge someone who is infringing your trademark.
trademark lawyer los angeles, IP lawyer, intellectual property lawyer