Thursday, October 4, 2012

Patents and Trademark - The DIY dilemma?

I've been fielding a number of questions about how to file a patent. As usual there is more than one way, which leaves many entrepreneurs scratching their heads. DIY or use a third party professional? 

1) DIY...for budget reasons many entrepreneurs like to do as much as possible themselves. For those people, there follows a concise listing of six key points to bear in mind...courtesy of Docstop.

2) The other route is to use a well qualified patent attorney. A good one may charge an eye-watering $750 an hour...but may save you a boat-load of money in the long run particularly if you have a complex legal situation with products entering multiple markets with multiple uses. Chances are, down-the-track, the party that is going to infringe your patent will arm itself with an excellent attorney... so if the seed capital allows for it, it makes sense UPFRONT to make sure you seek the protection of the same caliber of professional.

Before you start filling out an application to register your trademark with the United States Patent and Trademark Office (“USPTO”) online, there are six things you need to know.

1. How Much Does it Cost to File an Application and Which Is Right for Me?
The cost to file an application to register a trademark is either $275 or $375 per mark for each International Class in which you seek registration, depending upon the filing method you choose. If you choose the “regular” TEAS application process, the fee is $375. If you choose the TEAS Plus form the fee is only $275, but there are stricter requirements that must be met – such as requiring that USPTO classifications be used to identify the goods and services, prohibiting “free-text” entries for goods and services identifications and requiring that all communications from the USPTO be received by the applicant via e-mail during the pendency of the application. For further information on what is required to file a TEAS Plus application, go here.

For information on which application you should file, go here and review the bullet point list identifying what youmust agree to if you want to file the less expensive TEAS Plus form. The bottom line is that if you cannot satisfy the TEAS Plus application requirements as identified in the bullet point list, your only choice is to file the “regular” form with the higher filing fee.

2. What Must the Application Contain?
A “regular” TEAS application must contain at least four things, in addition to the filing fee:
1. the owner's name and address;
2. a clear drawing of the mark;
3. a list of the goods or services for which the mark is being used or will be used and the corresponding International Class number(s) that are appropriate for the identified goods or services; and
4. the filing basis.
As discussed above in Paragraph 1, more information is required to file a TEAS Plus application. To take a look at the TEAS Plus online application process and the questions that will be asked, without actually starting the electronic application form, the USPTO provides screen images in a Word document here.
3. Identifying and Classifying the Goods and Services
The USPTO has a searchable index of identifications for goods and services available that they recommend you use for your application. If you are filing a TEAS Plus form you must use these identifications for your goods and services. If you decide to file a “regular” TEAS application, you will be allowed to use identifications not identified in the USPTO index. Also, you can register your trademark for use in connection with more than one set of goods or services. However, if the goods and services you list fall into more than one International Class you will have to pay an additional filing fee. For additional information regarding International Classifications click here.
4. Actual Use or Intent-to-Use
When filing your application, you will need to decide under what “basis” you are seeking registration – either under the “use in commerce” basis (under §1(a) of the Trademark Act, 15 U.S.C. §1051(a)), or the “intent-to-use” basis (under §1(b) of the Act, 15 U.S.C. §1051(b)).

If you have already begun using the trademark in interstate commerce, you should file a use in commerce based application. When filing a use in commerce based application, in addition to filling out the application, you must supply the USPTO with a specimen showing the mark as it is used in connection with your goods or services, as well as the date(s) on which you first used the mark anywhere and in interstate commerce.

If you have not yet begun using the trademark, you must file an intent-to-use application. Initially, you will not be required to submit a specimen and date of first use, but such information must be filed at a later date (after actual usage) for your application to be approved for registration. However, even if filing an intent-to-use application, you must have a bona fide intent to use the mark in commerce. A bona fide intent means more than just an idea.

5. What Happens Next?
Within approximately 3-6 months after you file the registration forms (either use based or intent-to-use) an attorney with the USPTO will examine and research your application. The attorney will contact the person filing the application with any questions or concerns they may have about the application, and with notifications regarding the status of the application.
The USPTO attorney may contact the applicant to resolve an issue with the application, by issuing what's called an "Office Action." If you receive an Office Action, you will have six months in which to respond to any issues raised by the examining attorney.
If the USPTO approves your application, it will publish your trademark in the Official Gazette, and anyone who believes that they would be damaged by its registration (such as a senior user of a confusingly similar mark) will have thirty days in which to oppose registration of the mark.
If no one opposes (or requests an extension of time to oppose) within those thirty days, the USPTO will either approve your mark for registration (if you have already submitted an acceptable specimen of use) or issue a Notice of Allowance (if your application is still based on an intent-to-use). If the USPTO issues a Notice of Allowance, you will have six months from the date on which it was issued to either submit an acceptable specimen, or request an additional extension of time in which to do so. You can request up to five 6-month extensions of time in which to submit a specimen of use. The registration process can easily take 1-2 years, but once it is approved your rights date back to the day on which you filed your application.

6. Trademark Symbol Tips
Do NOT use the circle “R” (®) trademark symbol until a federal registration has issued. Such use is considered fraud and a registration might be denied as a result. Prior to actual registration by the USPTO, use the symbol “TM” to identify your trademark. Only after actual registration has been issued should the circle “R” symbol (®) be used.

 Finally, its worth pointing out that many times, I see entrepreneurs waste significant worry time on the patent issue. Before you decide which of the two paths to go down, make sure you ask your business and legal advisers whether it makes sense to invest in patent/trademark protection. You may be surprised how often the answer comes back a resounding NO!