Why You Should Consult an IP Attorney Before You Brand Your Business

Why You Should Consult an IP Attorney Before You Brand Your Business

by | Jun 26, 2018 | Intellectual Property, Patents, Trademarks

How is coming up with a brand for my business related to intellectual property? Profoundly, if you want to avoid costly trouble down the road. Skipping the formalities will potentially invite more hardships.

By “branding a business,” most people mean selecting a name for the business, a trade name, that sets the business apart and identifies the business. When used on goods or for advertising services, then a word, name, symbol or device can also develop trademark significance. In either event, the standards for infringement are the same: does your use of the trade name or trademark create a likelihood of confusion among the relevant public for your goods or services? The marks don’t have to be identical, and the similarities are typically more important than the differences.

Your advertising agency may suggest a variety of potential marks or trade names from which you may select. The ad firms may have done an initial investigation to see if the mark is available, first at the U.S. Patent & Trademark Office to see whether any similar businesses have conflicting trademark registrations, and then through one or more search engines, to see how the potential mark or trade name is used, even if not registered. Although these preliminary searches can be helpful in showing whether a name or mark is not available, they are inadequate, at best, to show the name or mark is adoptable or even eligible for federal registration.

Trademark attorneys routinely perform comprehensive searches, typically through a professional search firm, to provide a report to the firm on related U.S. federal trademark registrations, applications for registration, and common law uses, which include state registrations, the world-wide web, business names, and online databases including industry directories, catalogues, buyers’ guides, and proprietary listings of trademarks, brand names, and internet domain registrations. The attorney can prepare a legal clearance opinion based on the results of the search that can provide guidance on whether the trade name or mark is available for you to adopt and use, the risk of objections by others who might consider themselves damaged by the mark, and, in the case of trademarks, whether the term is potentially registrable. Trademark rights are territorial and so we typically search in foreign countries on an as needed basis as determined by the client.

When your chosen brand is considered available under the relevant legal standards, you can go forward in greater confidence that you will less likely suffer challenges to your brand in the future. Challenges can range from the cost of changing all your advertising materials and the attendant loss of trade recognition to money damages for infringement coupled with loss of previously established trade recognition.

Interested in speaking with an IP Attorney? Contact Pedigo Law. We would be happy to counsel you.

 

 

 

 

THE INFORMATION YOU OBTAIN AT THIS SITE IS NOT, NOR IS IT INTENDED TO BE, LEGAL ADVICE. YOU SHOULD CONSULT AN ATTORNEY FOR ADVICE REGARDING YOUR INDIVIDUAL SITUATION. WE INVITE YOU TO CONTACT US AND WELCOME YOUR CALLS, LETTERS, AND EMAIL. CONTACTING THE FIRM DOES NOT CREATE AN ATTORNEY-CLIENT RELATIONSHIP. PLEASE DO NOT SEND ANY CONFIDENTIAL INFORMATION TO THE FIRM UNTIL SUCH TIME AS AN ATTORNEY-CLIENT RELATIONSHIP HAS BEEN ESTABLISHED. MANY INVENTIONS ARE NOT PATENTABLE AND MANY PATENTED INVENTIONS ARE NOT SUCCESSFUL IN GENERATING SALES. SALES OF PATENTED PRODUCTS MAY BE DUE TO A VARIETY OF FACTORS AND SUCCESS FOR ONE PATENT OR LICENSE AGREEMENT SHOULD NOT BE CONSIDERED REPRESENTATIVE OR TYPICAL OF RESULTS YOU MIGHT EXPECT BASED ON A PATENT OBTAINED OR LICENSE WRITTEN BY THIS FIRM.  EXAMPLE(S) WILL ONLY BE PROVIDED TO DEMONSTRATE WORK PRODUCT AND WITH THE CLIENT’S PERMISSION.

Three of the Most Common Patent Errors Made by Companies

Three of the Most Common Patent Errors Made by Companies

by | Nov 27, 2017 | Intellectual Property

Many small and medium sized enterprises (SMEs) believe they lack the means, including financial power, to obtain patents on their inventions. However, just as for multinational corporations, the mechanisms exist for SMEs to innovate and protect themselves. Here are three of the most common errors made by companies seeking to protect their innovations.

Error #1 – Companies believe their new product doesn’t infringe on someone else’s patent

The first potentially fatal error is to release a product, patented or not, into the stream of commerce without first determining whether the product comes within the scope of another’s intellectual property (IP) rights. Remember, filing an application for a patent, and even obtaining a patent, does not give you permission to move forward with anything. Rather, obtaining a patent provides a right to exclude others from making, using, or selling the invention. Therefore, it is possible there are patents on inventions similar to your invention that could potentially present infringement problems, even if your invention is patentable. If one of your competitors has an issued patent within which your invention is contained, even if not explicitly named, then you have at least a potential infringement concern. This is important because in some instances, liability for infringement can cause a SME to shut its doors.

Error #2 – They engage in activities prior to filing a patent application that render the invention unpatentable

Take steps to consider whether your invention is potentially patentable. To be patentable, an invention must be novel and nonobvious over the prior art. (Prior art is defined by statute and can include your own publications and activities.) As a preliminary matter, to avoid refusal of a patent based on the novelty of the invention, applications for patent must be filed in the United States within one year of the first public disclosure or offer to sell the invention. The United States has a “relative novelty” standard and provides a one-year grace period to file the application after you make your invention publicly available or offer the invention for sale. Public use potentially can be established if the invention was disclosed to even one person without restriction, so you should advise your lawyer of your activities more than one year before any patent application is filed. The grace period for your activities does not apply to the activities of another, independent inventor. If another inventor makes the same invention as you and discloses it before you file your patent application, that disclosure will constitute a statutory bar and your invention will no longer be patentable.

This standard is different in countries other than the United States: there is no grace period. The application must be filed prior to any pubic availability of the invention, period. Europe, for example, has a requirement of “absolute novelty” for patents, and there is no grace period after public availability of the invention. However, for most countries, you will be able to claim the filing date of your first filed application as the priority date for filing, where the later applications are filed within one year of the priority application. As an example, if a US company decided to go international with their product, they could retain their original, US filing date for foreign applications.

Error #3 – They fail to search the invention and obtain an opinion of patentability

It is important to have a patentability search completed and to obtain a legal opinion of patentability as soon as possible after you have decided to consider obtaining patent protection. The search and legal opinion enable the patent lawyer to frame the invention and to draft a patent application and claims to the invention, whether on a regular patent application or a provisional application. This is of importance because the United States, and most other countries, abide by first-to-file, meaning another independent inventor can file before you, obtain a patent on the invention, and keep you from patenting, making, using, or selling the invention.

A patentability search and opinion also inform the inventor whether the invention is patentable and of the scope of claims that may be allowable; therefore, enabling informed business decisions, typically for much less than the cost of preparing a patent application. Although one is not required to search, filing an application in the absence of a search and patentability opinion generally is not recommended, and can result in more costly, lengthy, and uncertain patent prosecution during examination. For small firms, understanding the scope of what is possible is a relatively modest investment.

At Pedigo Law, we’ve secured hundreds of patents in a wide variety of technologies and fields. Contact the legal experts at Pedigo Law Firm for a thorough approach to all your patent needs.

The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters, and email. Contacting the Firm does not create an attorney-client relationship. Please do not send any confidential information to the Firm until such time as an attorney-client relationship has been established. Many inventions are not patentable and many patented inventions are not successful in generating sales. Sales of patented products may be due to a variety of factors and success for one patent or license agreement should not be considered representative or typical of results you might expect based on a patent obtained or license written by this firm.  Example(s) will only be provided to demonstrate work product and with the client’s permission.
Three of the Most Common Trademark Errors Made by Companies

Three of the Most Common Trademark Errors Made by Companies

by | Oct 24, 2017 | Intellectual Property

You have a great product or service and are ready to go to market with it. Now what? Before you spend significant amounts of money investing in a particular trade name or trademark, there are several things you need to know to ensure your brand launch will be successful. Here are three of the most common errors made by companies in establishing trade identity rights for their products and services.

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