What Is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

 Who may apply for a U.S. Patent?

A patent may be granted to the inventor or discoverer of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, or on any distinct and new variety of plant, which is asexually reproduced, or on any new, original, and ornamental design for an article of manufacture.

 On what subject matter may a patent not be granted?

A patent may not be granted on a useless device, on printed mater, on an improvement in a device which would be obvious to a person skilled in the art, or on a machine which is not useful such as an alleged perpetual motion machine.

 How long does a patent protect my rights?

Twenty (20) years from the date of filing a regular Utility Patent Application.

 How long does it take to obtain a patent?

Approximately twelve (12) to eighteen (18) months if no appeal is necessary. The exact time cannot be foreseen and depends upon the complexity of the invention and the workload of the examiner assigned to a patent application.

 What do the terms "patent pending" and "patent applied for" mean?

They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

 At what point can I claim my invention is "Patent Pending"?

From the day the regular Utility Patent Application or the Provisional Patent Application is filed.

 If two or more persons work together to make an invention, to whom will the patent be granted?

If each had a share in the ideas forming the invention as defined in the claims ? even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

 If a first person furnishes all of the ideas to make an invention and a second person employs the first person or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?

No. The application must be signed by the true inventor, and filed in the USPTO, in the inventor's name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

 What is a trademark?

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.

 What is a service mark?

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

 What is a certification mark?

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner's permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

 What is a collective mark?

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

 Do I have to register my trademark?

No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

 Why do I need a U.S. Trademark or Service Mark?

A trademark is an important part of the marketing of your invention or the service which you provide in the U.S. If you are selling a quality product or service, you want the people who use your product or service to recognize the merit of choosing your product or service. People identify a quality product by its trademark or logo when making a purchase. You also want your product clearly marked so that users will not be deceived by purchasing a product of lesser quality.

 Who may file an application?

Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

 What is a specimen?

A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8 1/2" x 11", then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8 1/2" x 11". ONE SPECIMEN IS REQUIRED FOR EACH CLASS OF GOODS OR SERVICES SPECIFIED IN THE APPLICATION.

 Can the USPTO refuse to register a mark?

Yes. The USPTO will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the Trademark Act (15 U.S.C. 1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

  1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
  2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
  3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
  4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
  5. the proposed mark so resembles a mark already registered in the USPTO that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
  6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
  7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
  8. the proposed mark is primarily merely a surname; and
  9. matter that, as a whole, is functional.

 How long does it take for a mark to be registered?

It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately six months after filing. The filing receipt will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the USPTO within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

 How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?

An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the USPTO Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.

 How long does a trademark registration last?

For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must file a 9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

 Is a federal registration valid outside the United States?

No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World Property Intellectual Organization, through the USPTO.

 Do I need a trademark in foreign countries?

If you wish to sell your invention in foreign countries, we recommend that you file for a trademark in the foreign country of your choice. You must realize that if you do not file for a trademark in a particular country, someone else can file for the trademark and market the product in the same country. They would not be able to sell the product in the United States, though, if you have a U.S. trademark on the same product.

 On what bases can a foreign applicant file an application for registration?

  1. Use in interstate commerce or commerce between the United States and a foreign country.
  2. Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
  3. Ownership of an application filed in a foreign country (if within six months of the foreign filing date).
  4. Ownership of a foreign registration (with a copy).
  5. Extension of protection of an international registration to the United States under the Madrid Protocol, pursuant to section 66(a) of the Trademark Act.

 Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.

 When is it proper to use the federal registration symbol?

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]

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