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Knockout Searches for Trademarks

A knockout search is a search run before filing a trademark application to assess,

Phoenix Mountain Preserve

primarily, the viability of obtaining a registration on that trademark. Whether you can use the mark is actually a slightly different question from whether you can register it, but a knockout search will reveal some information about the use possibilities. A knockout search is usually a recommended step before filing a trademark application.

There is no requirement that any sort of search be completed prior to a trademark application filing. Many clients forego them. However, the Trademark Office will always run a search – and so clients who skip this first step run the risk that their applications will be rejected by a similar mark that the Office pulls up in its search.

The knockout search reduces this risk. Knockout searches are usually a few hundred dollars or less, compared to the thousand-plus dollar cost of a trademark application. This is money well spent when the search reveals a conflicting mark has already been registered. It gives you the ability to decide whether to proceed forward with knowledge of that risk or to change your mark to avoid it.

When we conduct a knock-out search, we perform it on the federal database, including both the Principal and Supplemental Registers at the Trademark Office. This therefore covers every single mark that could ever be cited against your mark once you submit an application. We used to develop and run each search manually, querying the federal database directly. Now, we also run our searches through a piece of proprietary software which performs an AI-based search of the federal database. With this two-pronged approach, we have found we can provide more accurate results and better predictability to our clients. To that point, in the almost three years since we adopted the two-pronged approach, and for those applications that we ran pre-filing searches, only one was rejected in light of a mark that the Trademark Office found in its search.

Any knockout search should not only deliver a set of raw results – the potentially-conflicting trademark registrations – but should also be a report containing analysis. You hire an attorney not to run a search but for his or legal advice. Trademarks receive rejections if they are too similar to another mark; this question of “similarity” is based not just on the marks themselves, but a number of other factors that a trademark attorney should be experienced in recognizing and evaluating. Therefore, any knockout search should review those factors. In our searches, we provide the most relevant results as well as a determination of registrability, identifying the level of risk of a rejection based on those results.

Some firms only search word elements – trademarks that contain nothing but words. Searching marks that contain design elements, or that are solely composed of design elements without any words, is more difficult. However, there are advanced searching features on TESS (the Trademark Office’s search interface) which allow you to search by design element or design code. We exploit those advanced features, and our software also allows us to search design marks.

Trademark knockout searches are not comprehensive searches. A comprehensive search usually looks for similar marks at the Trademark Office, just as the knockout search does, but then goes further by looking through business name registrations, phone number databases, internet domain names, common law usage. Clients run comprehensive trademark searches if they are concerned with the potential for infringement, if they need to review foreign trademark databases, or if they believe they will expand their business quickly into many locations across the nation.

Knockout searches are also different from direct searches. A direct search covers essentially only the mark itself. This is often the sort of search that a client runs on its own; if so, clients can sometimes mistakenly believe that their marks can be registered because the direct search didn’t return any results. However, ignorance is not bliss – the direct search does not replicate the search the Trademark Office runs, and so it is not an accurate predictor of the likelihood a mark will register. Only a knockout search will do this.



US Trademark Applications Based on Foreign Trademark Applications and Registrations

Trademark applications in the US can be based on use, an intent-to-use, or a foreign trademark application.

Spud Lake north of Durango, Colorado

When a trademark application has been previously filed outside the US, for certain entities there are ways to enter the US based on that foreign trademark application.  Applications can be filed under what is called 44(d) and 44(e) bases.  There are a lot of wrinkles to prosecution under both bases, and you should consult an attorney before filing an application under either.  For example, certain actions must be taken if you, as the owner of the foreign trademark, are not domiciled in the United States.  These actions can affect the cost, timeline, and registrability of the trademark application.  And particular timelines must be followed if you are or have filed a number of foreign applications before the US one.  Despite these and other nuances, the below provides a brief overview of the two different foreign-basis processes.

Section 44(d) Filing Basis

Under Section 44(d), your US trademark application can be filed and granted a priority date because you filed a foreign priority trademark application less than 6 months before.  You must claim an intent-to-use the trademark in United States commerce.  The scope of the goods and services identified in the US application is confined by the foreign trademark application; it cannot be broader than the priority application.

The Examiner will then begin to review the US application.  If there are issues with it, the Examiner will send an office action presenting those issues, and you will have 6 months to respond and overcome those issues.  If you do overcome those issues – or they are never raised in the first place – then the Examiner will suspend the application pending an update on the foreign trademark application.

If the foreign trademark application registers and you provide proof of such, then the US application can be converted from a 44(d) basis to a 44(e) basis, discussed below, and the application will be published for opposition (https://galvanilegal.com/wp/trademark-opposition/).  If, however, the foreign application is abandoned, your US application may be re-suspended, or you may have the opportunity to rely on some other filing basis without forfeiting the priority date.  For example, if you have begun to sell the product in the US, you can change the intent-to-use basis of the US application to an actual in-use basis.

It is important to remember that Section 44(d) only provides a basis for receiving a priority filing date – an effective filing date which is earlier than the day the application was actually filed in the US – because of the foreign trademark application.  It does not provide a right to publication or registration.

Section 44(e) Filing Basis

If you own a valid foreign trademark registration, you may be able to base a US trademark application on it under Section 44(e).

When you file an application under 44(e), you must claim a bona fide intent to use the mark in US commerce, the scope of the goods or services cannot exceed that of the foreign trademark application, and you have to submit a copy of the foreign trademark registration from the country of your origin.

If the Examiner finds that all filing requirements under Section 44(e) are met, the US trademark application will be approved for publication.  If not opposed, it will then proceed toward registration.  Section 44(e) thus provides a basis for registering a trademark in the US without actually using it in the US.  There are some drawbacks to this, but it is nonetheless an important exception to the conventional requirement that a mark be used in order to be registered.



Correction of Inventorship in Patents

A patent must identify the correct inventors.  A patent which names the wrong inventors can be invalidated.

Early Morning, Phoenix Mountain Preserve

Early Morning, Phoenix Mountain Preserve

Sometimes, friends and spouses want to identify each other to be nice, but a person is only an inventor if they have contributed to material claimed in the patent.  Occasionally, mistakes are made in the identification of the inventorship and they have to be corrected.

Inventorship can be corrected if the mistake occurred in the original oath or declarations, or if the inventorship was not updated as the examination was processed and the claimed subject matter changed.

Although there is no requirement that an inventorship  mistake be corrected diligently after it is discovered, there are timing requirements.  This means that corrections that are made after a notice of allowance has been mailed will not necessarily be approved; though rarely will an Examiner deny the correction.

The main requirement in fixing this mistake is ensuring that it did not happen on purpose, that there was no “deceptive intent.”  The patent rules state that if the inventorship is mistakenly submitted an executed oath or declaration in a nonprovisional application, and the mistake arose without any deceptive intent on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, then the inventorship may be corrected to name only the actual inventor or inventors.

Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or was not the sole inventor.  If such an error occurred without any deceptive intent on the part of the erroneous inventor, then the Patent Office can substitute the correct inventorship for the erroneous inventorship.  Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; and erroneously identified joint inventors to a different, but actual, sole inventor.

Amendment of the inventorship requires:

  • A request to correct the inventorship, explaining the requested change;
  • A statement from each person being added (if applicable) as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
  • A statement from each person being deleted (if applicable) as an inventor that there was no deceptive intent error in inventorship occurred without deceptive intention on his or her part;
  • An oath or declaration by the actual inventor or inventors
  • The processing fee ($35 for small entities as of the time of this writing) and potentially an additional processing fee depending on the timing of the request
  • If the patent application has been assigned, then written consent of the assignee
  • A corrected Application Data Sheet that updates the inventorship with markings


Podcast: Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Windy Point on Mt. Lemmon

Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer.  We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:

Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Pipeline Design and Engineering designs elegant products for its customers.  They are experts in the fields of mechanical engineering & product development.  Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique.  Aaron graced me in as a past engineer.  I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.

 



Line Differences in Design Patent Applications

Mesquites in Late Spring

The scope of protection of a design patent is defined by the drawings presented therein.  In that way, design patents can often seem like a very simple or straightforward form of protection: show some drawings in an application, file it, get a patent a year later.  Not quite.

The Patent Office manual for examination plainly states:

“The necessity for good drawings in a design patent application cannot be overemphasized.  As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.  An insufficient drawing may be fatal to validity … Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.” – MPEP 1503.01

The Patent Office quote indicates how important drawing quality is from a validity and examination standpoint, and acknowledges the subtle dangers in haphazard drawing generation.  However, to this should be added that good drawings will also drastically affect the strength of a design patent.

The creation of design patent drawings has to be undertaken very carefully.  The lines illustrating the design are shown in solid lines and broken lines.  Solid lines define the actual protected design, while the broken lines show contextual information.

Broken lines are most commonly used to show environment and to define the boundaries of the claimed design.  Broken lines may show environmental structure or a feature that the design fits onto or is located near, to show the structure in context in its environment.  Broken lines may show portions of a claimed design which are unclaimed.  In some cases, broken lines may illustrate claimed design, such as stitching and fold lines.  However, broken lines are not permitted for the purpose of identifying portions of a claimed design which are immaterial or unimportant.  Broken lines cannot be used to show hidden planes or hidden lines – lines which cannot be seen behind opaque materials.  Broken lines can’t be used in design patent drawings to show alternate positions of a structure, such as a door moving between open and closed positions.

Broken lines may be drawn along a boundary that does not actually exist in reality.  For example, while broken lines are often drawn along real lines, such as the edge or corner of a table, broken lines could be shown extending across the face of the table’s smooth top.  This would show that the top – or a portion of the top – is not claimed.  Creative and flexible use of broken lines can drastically alter the scope of the design patent protection – intentionally or unintentionally.  They also present a powerful to build a packet fence around a design.  Apple granted multiple patents on the iPhone design, each with a different permutation of broken and solid lines:

Broken line permutations in design patent drawings

 

When broken lines are used, they must be explained.  A statement must be included in the specification explaining the significance of the broken lines.  Sometimes, if the broken lines are used for different reasons, slightly different broken lines are used and each is explained.

There are a lot of ways to prepare a good design patent application, and a lot of ways to mess it up.  When considering design patent protection, I strongly recommend you hire a registered patent attorney to do so, and that ensure that that attorney uses a professional patent draftsman experienced in creating design patent drawings for the United States.  You will rely both on the expertise of the attorney in deciding what views to show, how many views to show, and what material should be claimed and unclaimed, and also on the ability of the draftsman to deliver on instructions from the attorney.



CORONAVIRUS: Patent Office Form For COVID-19 Statement

Getting hotter in Phoenix

As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak.  Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.

The Office has now created a fillable PDF form which contains this statement.  The form can be filled and filed directly to the PTO with its own Doc Code.  Upon filing, it should be easily identified by the Patent Office and processed accordingly.

The form is available here.  Please note: this is a patent form; it looks like the other forms used by the Patent Office.  I’m not aware of any crossover between patent and trademark forms.  It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents.  However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.



Design Patent Rocket Docket

Near Eaton Canyon, Pasadena

The “Rocket Docket” program is the system the US Patent Office established to speed up the examination of design patent applications.  Recognizing that design patents cover the external appearance of an item, and that this external appearance, contrasted with the underlying guts, can often be easily copied, the Patent Office created a way to hurry along examination of design patent applications.  Formally known as Expedited Examination but referred to by practitioners and the USPTO alike as the Rocket Docket (even PTO forms use the doc code: “ROCKET”), this program can shave as much as a year off the pendency of a design patent application.

As of March 2020, the average time to a first office action – a first substantive review of a design patent application – was 15.2 months with a total average time from filing to issuance at 21.4 months.  Both of these numbers have been slowing creeping up over the years.  In contrast, it takes just over one month from the day an expedited exam request is granted to the first examination of a rocket docket design patent application.  This is an incredible savings in time.  So, what does it cost?

To be eligible for the rocket docket, a design applicant must conduct a pre-examination search and file a Request for Expedited Examination.  The request includes information about the pre-exam search, and the results of the search must be disclosed in an accompanying information disclosure statement.  Lastly, a fee must be paid.  Currently, the fee for small entities is $450.  This is relatively cheap compared to the cost of expediting a utility patent application for $2,000, but the pre-exam search can be costly, often running more than $2,000.  A thorough search must be run, because the Patent Office leans on that search heavily as a way to reduce the amount of time it needs to review the design application.

The US Patent Office states that the results of a search by a foreign patent office can be submitted in lieu of an internal pre-exam search.  However, it is questionable whether this is a practical approach, as most foreign offices merely register a design without search and examination.

Additionally, the design application must be complete when filed.  This means that the drawings must be acceptable and conform to the Office’s standards.  Drawings which contain errors or ambiguities are frequently an issue in design applications, so great care must be taken with these.  The basis filing, search, and exam fees for a design patent application must also be paid.  In short, the entire application must be complete and in condition for examination – this requires a lot of attention by the party preparing the application.

Failure to submit a request that properly reports on a competent pre-exam search can be basis to have the rocket docket request rejected.  As such, great care must be taken when conducting this search.  It is strongly recommended that a professional searcher perform this search.  Indeed, this firm uses an outside professional search to conduct the pre-exam search and even develop a report on the databases searched, the classes and keywords used in the search, and the results found.



Coronavirus: US Patent and Trademark Office Extends Deadlines Further

Drive Back from Solitude Ski Resort

The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic.  At the end of March, the USPTO announced it would do just that.  As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.

The Office has now modified that deadline extension.  Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.

Please note – this is not an additional extension.  It does not grant another 10, 15, or 30 days to file.  Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1.  If your deadline was originally due March 27, this gives you two additional months.  But, if your deadline fell on May 31, this only gives you a single extra day.  It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.

It is possible that this extension allowance will be modified again.



Trademark Office Changes Rules About Personal Emails

Descanso Gardens

About two months ago, the Trademark Office announced entities would have to begin disclosing their personal email addresses in trademark applications and trademark registrations.  I joined almost 200 trademark attorneys in protest of this rule.  We argued that it would expose clients and pro se applicants to spam emails, would eliminate applicants’ privacy, and would provide no real benefits.  The Trademark Office caved on some filings, but not all, and we were required to disclose applicants’ email addresses.

On Friday, the Trademark Office altered course.  While still requiring that personal email addresses be disclosed in trademark applications and trademark registrations, those addresses will be hidden from public view.  The exception is if a trademark applicant files an application on his or her own.

The announcement from the Trademark Office:

We’re taking steps to address your concerns about owner email addresses being visible in TSDR. The owner email address field is now masked in TEAS and TEASi documents viewable in TSDR, including submissions viewable in the documents tab, application programming interfaces (APIs), and PDF downloads. Unrepresented owner email addresses will still be viewable in the correspondence email address field. When you open a TEAS or TEASi document in TSDR, you’ll see ‘XXX’” in the owner email address field. We believe this will help reduce the number of solicitations you receive.



Vagaries of Design Patent Practice

Sunset in Phoenix

Design patents protect the ornamental and aesthetic aspects of a functional item.  Whereas a utility patent protects the parts of the item, the way its parts cooperatively move or operate together, how they are structured and arranged, etc., design patent protection how that item actually looks.  They do this by presenting drawings of the item and then claiming protection in the design shown in those drawings.  As such, the bulk of a design patent application is the drawings, and there is relatively little written text accompanying those drawings.

Because of this, design patents can often seem to be simple.  But there is a subtlety in each application that requires anticipating the prior art, the course of examination, and the need for expansion of design protection in the future.  Complicating this subtlety is the relative scarcity of practical information regarding design patents.  This is a systemic problem, created by a few factors.

First, there just aren’t many design patents out there.  Pretty consistently, less than 10% of the patents issued each year are design patents.  In recent years, that is about 30,000 issued design patents.  About 40 to 45,000 are filed each year, so very roughly, we can say that a third of filed design applications go abandoned (design apps generally have a pendency of about 6-18 months, meaning they are likely to issue in the same or next calendar year, if they issue at all).

Not only are practitioners not filing a lot of design patents, but the ones that are filed don’t provide much feedback.  Design patent applications are never published, so the 15,000 or so applications that abandon each year do so in secrecy.  This is a tremendous loss of learning opportunity from these abandoned applications.  For comparison, around 600,000 utility patent applications are filed each year and about 300,000 issue; though utility patents have a much longer pendency than design patents, we might safely say that at least one hundred thousand utility patent applications are abandoned each year.  A majority of these are published, and the file histories can be reviewed to see what went wrong.  From that, patent attorneys can determine how not to write and prosecute patent applications.  But because abandoned design patent applications are not publicly available, we can’t study what goes wrong in them.  Instead, we have to rely on what went right.  Moreover, it is not uncommon for a well-written design patent application to receive a first action allowance – in other words, no rejections.  While this is a good thing, it does not help expand a practitioner’s understandings to the edges of design patent practice – could more have been claimed, could the claims have been broader, would there have been a reason to claim differently or present different drawings or more drawings or several embodiments, etc.?  Answers to questions like these are just not available except to perhaps – perhaps – the largest entities with tremendous legacy knowledge and systems developed to pass that knowledge to its team (and almost certainly a large team) of lawyers who may be spread and isolated across different and often competing large law firms.

The Manual of Patent Examining Procedure – the Patent Office’s guidebook for reviewing patent applications – is mostly written to utility patents.  Often decried as a manual for Examiners to craft rejections against patent applications rather than a guidebook for level prosecution (defining the limits of rejections and response arguments), the MPEP pays scant little attention to design patent applications.  This means that examination consistency suffers among Examiners and that practitioner’s counsel to clients becomes more nebulous.  Design applications are then written from a few perspectives: not just based on objective rules in the MPEP and case law (few design cases are ever appealed), but the particular client’s tolerance to risk and cost involved in preparing and arguing an application with an Examiner who may or may not read the rules in the same manner as the last Examiner, or even as they did six months ago.  Principled and rule-based arguments that may win in the well-defined arena of utility patent prosecution may descend into pleading negotiation with an Examiner in light of a refusal in a design patent application.