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What should a business trademark?

Trademarks - BrandsI have so many things to trademark – where do I start?

I get this question all the time. First, keep in mind that the strength of a brand is in its ability to distinguish a product or service from similar products being offered by others. Think of any famous brand (Starbucks(R), McDonald’s(R), or other famous trademark). While these companies may have multiple trademarks, they put the most effort into marketing only a few of these brands.

So now that the business has narrowed their list down to one (or maybe two, or at most a few) mark, the next question I usually get is . . .

Do I file a trademark application for the graphic, the words, or the combination (or all three)?

The broadest protection is going to be the words along – without any restriction as to style or appearance. But if the business ALWAYS uses the word in a particular style, color, or font, it may be worthwhile applying for a trademark registration for that specific design. Of course, for the most protection, the business can apply for both the word mark and the design mark.

What will it cost to file a trademark registration application with the U.S. Trademark Office?

The government filing fee is $325 per class (current as of the date of this article). Although if you are not concerned as to description, it is possible get the filing fees reduced to $275 by selecting one of the Trademark Office’s pre-selected descriptions of the product or service. If you have an attorney prepare your trademark application (which I highly suggest working with a trademark attorney to avoid costly mistakes), those fees will be in addition to the Trademark Office fees.

Most trademark attorneys will also recommend a Clearance Search and Opinion – to help make sure there are no other marks already in use that are the same (or even similar!) to the proposed mark. Using someone’s else’s mark can result in having to defend a trademark infringement action – even settling can be costly. I always suggest working with a trademark attorney for the Clearance Search and Opinion.

Once the trademark is cleared for use, you will need to provide your trademark attorney with:

  • Your selection as to Word-Only, Graphic-Only, or Both marks (see above);
  • Listing of all products the mark  is being used on (or planned to be used on in the “near-term”);
  • Date of first use anywhere; and date of first use of the mark on products in Interstate Commerce (these dates are usually the same, with some exceptions);
  • The name, address, type of company (e.g., Limited Liability Company), and owner of the company which is actually using the mark; and
  • Photos of the mark on the products in the list above.

Remember to let your trademark attorney know if you are using the mark outside of the United States, and if so, which countries it is being used in. Additional fees will apply for filing application for registration outside the US; and certain deadlines apply.

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Interviewer: Should inventors take their ideas to the company they are working for?

Patent Attorney: Many companies have procedures in place for evaluating intellectual property internally. Sometimes the company may release rights to an invention if it has no value to the company.

Interviewer: So even if I am required to assign my invention to my employer, they might let me keep it?

Patent Attorney: Every company is going to have their own policy, but it’s certainly a possibility.

Interviewer: Any other tips?

Patent Attorney: Check the Employee Handbook, the company intra-net, and any other materials the company may have given you to determine if there is a procedure in place for dealing with intellectual property. If there is, determine whether you are required to assign over rights to you invention.

Interviewer: So even if I’m required to sign over some types of inventions to my employer, I may not be required to assign over other types of inventions?

Patent Attorney: That’s right. An employer may have no interest in your invention if it is unrelated to the business of the employer. Or an inventor’s position with a company may not require that they assign over rights to their invention.

Interviewer: And I suppose you’re going to say to talk to a patent attorney for specific advice?

Patent Attorney: Of course – the law governing assignment of ownership rights in inventions is going to depend on the specific circumstances, whether there is a written agreement, and the laws may even vary by state.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

Interviewer: Really, so even though I’m not being paid to develop products for my employer, if I do, my employer may own the invention?

Patent Attorney: It’s going to depend on the circumstances. For example, inventors should check whether they signed an Employment Agreement with their employer. If so, they should carefully read the terms and conditions, particularly any intellectual property provisions. Often, the Employment Agreement will state what types of inventions must be assigned over to the company. Examples might include anything developed using company property or developed on the company clock. But many Employment Agreements go further than this. It is best to have a patent attorney review the Employment Agreement and give specific advice.

Interviewer: What if I didn’t sign an Employment Agreement?

Patent Attorney: There are other circumstances in which an inventor may have to sign over rights to their invention to a company they work for. For example, the inventor may have an independent contractor or other agreement with the company they work for, which includes intellectual property provisions similar to those we just discussed for the Employment Agreement. Or the inventor may have a fiduciary duty to the company, for example, if the inventor sits on the board or is a major investor in a company.

Interviewer: So practically speaking, how does this affect the typical individual inventor?
Patent Attorney: It’s common to get ideas when you’re at work, or as a result of work you are doing. Often, the inventor believes that because the idea was their own, that they should own any patent or other intellectual property rights to that invention. But before paying a patent attorney to prepare and file a patent application, inventors should first make sure that they don’t have any prior obligations which might require the invention be assigned over to the company they are working for.

For Part 3 o 3, Follow This Link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3