• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Student Athlete Trademarks, Names, Images, and Likeness

Student athletes will now be allowed to profit from their performance and influence.

Until this year, the NCAA prohibited college students from making money for playing sports. However, this month, Florida began allowing students to benefit financially from their performance and the money and attention that brings. California signed the Fair Pay to Play Act (“FPPA”), going into effect in 2023 and affecting schools that make $10 million or more in media rights each yeah. Colorado will allow students to profit from their name, image, and likeness in 2023 as well. Discussion and legislation are working through most of the other states and Congress as well. Rather than being directly paid to play, most rules allow student athletes to accept brand relationships, sponsorships, and other promotional arrangements.

Social Media Influence

Companies seeking sponsorships opportunities are looking for not just outstanding athletes but also influencers who reach a large audience.

A large audience means widespread brand promotion. It also means targeted promotion; the right sponsors may be able access specific demographics through the student’s socials. Those demos may be ones that they cannot otherwise target. This represents a tremendous opportunity for the sponsor and thus can create great value for the student. Knowing this positioning will be incredibly important for any student athlete negotiating a deal.

The Student’s Opportunity

Most athletes become famous long before they turn professional. While professional athletes have an insanely high level of fame, many of them were famous or at least well-known in college, and some in high school. A student who captures the value of their athletic performance while they are still in college builds their brand early and realizes a longer income life.

Some student athletes don’t turn professional, either because they aren’t quite good enough or because there is no professional league for their sport. For them, college may be the only time that they would be able to profit from their performance. Doing so may be an opportunity to make money from their sport before graduating and entering the more normal workforce.

Potential Challenges

Student athletes and the colleges they attend may become competitors. For example, a school that has a contract with Nike to outfit its players in Nike gear only will not be too happy with a student who individually takes a deal to rep Adidas. How does this conflict resolve? In California, the FPPA prohibits the student from closing a deal with a competing sponsor. The NCAA may adopt a similar policy. This potential conflict could be in any number of fields: nutrition, beverages, shoes, athletic and protective equipment, mobile services, etc. This will restrict the student’s opportunities and will require competent representation to negotiate those limitations.

Protecting Name, Image, and Likeness

Being popular on social media is just one aspect of building value. Look at any highly successful professional athlete and you will find a portfolio of trademarks protecting them.

It may seem strange, but a person doesn’t necessarily own their name. Simply having a name does not alone give someone the right to prevent other people from using it. If a student athlete doesn’t actively pursue protection, then there are only a few ways in which they can prevent others from using their name, image, and likeness (“NIL”).

Filing a trademark application is perhaps the easiest, most straightforward, and most definite way to protect a student athlete’s brand. Trademarks can cover the student’s name, nickname, any logo they adopt, or a catchphrase or slogan used on or off the field. Some marks that come easily to mind:

Johnny Manziel’s Trademark

Lance Armstrong’s Former Foundation’s Trademark

Tim Tebow’s Logo

Michael Phelp’s Logo

Jeremy Lin’s Trademark

Serena Williams’ Logo

While filing a trademark application is an easy step, it is one that still requires careful planning. The student and their attorney must consider how the student’s fame is likely to be used, how it will leverage the most value, and consequently how a trademark application should be filed to capture that. Further, once filed, the application needs to be properly processed through the Trademark Office. Once the mark is registered, the student will want to monitor for unauthorized use of their properties.

Some athletes will also want to consider seeking international protection, either because they will play internationally or because they expect their fame to extend beyond the boundaries of the US.

Lastly, owning trademarks protecting one’s name, image, or likeness is just the start – the student athlete will likely want and need guidance in negotiating deals with companies. Representation – either with a registered agent or attorney – will serve the athlete well in ensuring that they take the fullest advantage of their performance.

If you are a college student with questions about how to protect your influence, please feel free to contact trademark attorney Tom Galvani.



Juneteenth at the Patent and Trademark Office

The United States Patent and Trademark Office is closed today, June 18, 2021, for the first federal holiday of Juneteenth National Independence Day.  Federal employees have the day off.  The electronic filing systems remain open for business for all those who still wish to file applications, responses, and other communications with the Patent and Trademark Office.



Revival of a PCT Application

Gila Monster, Brown’s Ranch, Scottsdale

The Patent Office is relatively generous when it comes to tolerating accidents in patent applications and patents. Revival of a PCT application is more difficult.  Patent applications can sometimes go abandoned when an applicant fails to submit a reply or response in time, or fails to pay the full amount of a fee that is due, or leaves out critical elements of an application. I recently inherited a client with a patent portfolio that had all of these problems, and fortunately, they can be solved in most circumstances. The Patent Office allows revival of an application with the filing of a petition explaining the lapse and delay, and payment of a hefty petition fee.

An owner can also “revive” a patent.  Utility patents have maintenance fees that must be paid periodically to keep the patent alive. If any of those payments are missed, the patent will expire. However, the Patent Office has a mechanism to accept the unintentionally delayed payment of a maintenance fee. Again, this requires a large surcharge.  I have had to do a few of these, all because an attorney passed away without a contingency plan for transferring or alerting his clients.

A PCT international application, however, is a different animal. PCT applications proceed along a strict and time-sensitive path. PCT applications must be filed within 12 months of a first priority date to initiate an “international phase” of the process, in which the PCT application is centrally searched, examined, and potentially amended. Then, the applicant must enter the “national phase” of the process within 30 or 31 months (depending on the country) of the priority date by filing national phase applications in foreign countries. If the applicant doesn’t file foreign-country applications by the 30/31 month deadline, the PCT application simply expires.

“PCT” stands for Patent Cooperation Treaty. More than 150 contracting states have signed the PCT. This treaty establishes a centralized process for searching and examining applications, internationally-accepted indications of patentability, and processes for filing local patent applications based off the PCT application. Another tenet of the PCT is that the international application has the effect of a national patent application in all contracting states when it is filed. In other words, filing a PCT application is considered to be effectively filing an application in each of the 150 contracting states’ patent offices.

This yields a helpful consequence in the US, with its generous abandonment and revival rules. The US revival rules are not limited to applications that are actually filed with the Patent Office; it applies to any application that is effectively filed. This means that, if an applicant files a PCT application and forgets to enter the US as a national phase application by the 30-monthe deadline, then you can actually revive the application as to the US.

This is not revival of a PCT application itself. There is no mechanism to do that. However, revival of a PCT application as to the US will allow you to file into the US and maintain the PCT’s priority date. Your ability to revive the application in other countries will be similarly determined by local law there. Reviving a PCT application in a national phase country is not simple. Check with foreign counsel or your local patent attorney and discuss the reasons the PCT application was abandoned to see if revival is even an option.



Oath Or Declaration in a Patent Application

Oath or Declaration in a Patent Application

Phoenix Mountain Preserve

When does a patent application require an inventor’s oath or declaration?  Well, almost always.

Only the inventor or inventors of an invention may file for a patent application claiming the inventive subject matter. “A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). This statute bars the issuance of a patent where the applicant, or identified inventor, did not invent the subject matter being claimed. See In re Verhoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998); City of Milwaukee v. Activated Sludge, 69 F.2d 577, 587 (7th Cir. 1934) (“When a number of persons make an invention jointly, a valid patent can not be taken out in the name of one of them.”)).

The Application Data Sheet sets forth the inventorship and is presumed to be correct on its face. An oath or declaration must therefore be submitted for each person identified as an inventor. An oath or declaration filed in a patent application must identify that the person making the oath believes the named inventor(s) to be the original and first inventor(s) of the claimed subject matter. This is to ensure that each inventor indicates what he or she believes to be the appropriate inventive entity.

The oath must also state that the signatory acknowledges the duty to disclose to the Patent Office all information known to be material to patentability. Inventorship is typically conception; reduction to practice – drafting someone else’s idea – is not sufficient to be considered an inventor.  See Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993).

So, when a person conceives of an idea, that person becomes an inventor, and that person must sign and file an oath or declaration making certain statements about the duties and facts surrounding invention and the examination of a patent application for the idea.

In some cases, multiple may be inventors. Joint inventorship can happen through close collaboration or because a project develops over time and is added to by inventors completely separate from each other. A joint inventor is a person who:

(1) contribute[s] in some significant manner to the conception or reduction to practice of the invention, (2) make[s] a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do[es] more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Pannu, 155 F.3d at 1351. “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116. Joint inventors may not apply for a patent other than jointly; neither of them can alone file a patent application. 37 C.F.R. § 1.45(a).

It is prohibited for a joint inventor to receive a patent that doesn’t name the other joint inventor(s); doing so can be a basis for later invalidating the patent if the inventorship is not corrected. Thus, joint inventors must sign their own oath or declaration.

Unfortunately, an original oath or declaration cannot always be obtained. Sometimes, an inventor can’t be reached, or refuses to sign, or has died. That doesn’t a patent app can’t be filed or a patent issued.  Rather, the rules account for these situations and there are mechanisms and procedures to file an application without the required oath or declaration.

An oath or declaration is not required in all continuing applications. Under 35 U.S.C. § 115(g), the requirement for a signed declaration does not apply if the inventor was also named as the inventor in a parent application, to which the subject application is a continuation or division. A properly-signed declaration previously submitted in such a priority application renders the requirement for a dec moot. Nevertheless, it can sometimes be easier to file the declaration from the previous application in the new application, just so that it is of record and the file is clear. And, if the inventorship has changed at all from the prior application, new oaths or declarations must be filed.



Common Ownership of Trademarks

Purgatory Ski Resort

Trademarks are fundamentally about preventing confusion regarding the source of a product or service.  Consumers who encounter two similar trademarks in the marketplace might mistakenly believe that the products come from the same source.  This can allow one company to unfairly ride off a competitor’s goodwill.

Trademark law prevents a company from improperly using a mark too similar to another’s.  This occurs through two mechanisms: first, trademark infringement, and second, trademark registration.  Infringement is an adversarial sorting-out between two parties in which one party’s use of a mark is challenged.  The law prohibits ownership of two similar marks, and infringement proceedings determine who has senior rights.

Trademark registration is an application process with the federal government, where a single party requests that it be granted broad, national, recognized rights in a trademark.  When an applicant files for registration, the application is assigned to a federal Trademark Examiner, who reviews the application on formal and substantive grounds.  A major part of this review process is conducting a trademark search.  The Trademark Examiner runs the search on the Trademark Office’s records only.  If he or she finds a mark which is similar, the possibility for a refusal arises.

A similar underlying mark will not always trigger a refusal, however.  The Examiner must determine the ownership of the underlying mark first.  If the owner of the underlying mark is the same as the applicant, the Trademark Examiner will usually not issue a refusal.  But they may request more information about whether there is common ownership between the underlying and applied-for marks.

Common ownership may exist where the applicant and the owner of the underlying mark are related.  Some relationship between the two companies does not automatically establish common ownership, however.  Rather, there must be a sufficient relationship such that the products or services essentially emanate from a single source, and “source” encompasses more than just “legal entity.”

In addition to the existence of a legal relationship, there must also be a unity of control over the use of the trademarks.  “Control” and “source” are inextricably linked.  If two companies, related in some way, nonetheless are able to exercise their own separate, independent control of the nature and quality of their goods and services, then they exist as separate sources, and a refusal will be issued.  If, however, control of the two companies’ offerings is coordinated, controlled centrally, or otherwise consistent with each other, it is likely that common ownership exists, and a likelihood of confusion refusal would not be issued.

As an example, imagine tow trademark applications filed for two different companies, but based on similar marks and similar services.  The Examiner issues a warning of a potential rejection based on similarity of the marks.  The names of the companies are completely different, but the Examiner notices that the addresses were the same.  The Examiner may be perceptive enough to ask whether common ownership existed.  Indeed, in this case, that is true: although the companies are separate, they are owned by a single person (running an office from a single address).  He makes all sales decisions, all marketing decisions, etc.  In short, a single person controls all decisions about both companies.  The Examiner would accept such an argument and abstain from issuing a refusal.

Sometimes, an applicant may wish to submit a claim of common ownership initially with the filing of the trademark application.  In other cases, the applicant may not wish to make this statement up front.  For more information about common ownership of trademarks, please contact a trademark local or Arizona trademark attorney Tom Galvani directly.



Trademark Applications Can Be Expedited or “Special”

Expedited Trademark Applications

Lemon Reservoir, Durango, CO

The US Patent and Trademark Office processes trademark applications in the order in which they are received. Before 2020, that led to wait time of about 3 months before an application would be substantively reviewed by a trademark Examiner. This year, examination has slowed a bit, and Examiners are taking about 4 months to initially review a trademark application.

This 3 to 4 month delay right from the outset can feel like an eternity (though it doesn’t even compare to the delays for patent applications, which can sit 1-2 years after filing before receiving examination). But you are usually stuck with it. There are only two procedures in which an application can be made “special,” so that initial examination will be expedited: requests to make special and petitions to make special.  Detailed information is below, and official USPTO information is available at TMEP 702.02.

Request to Make Special

A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon the request of the applicant. However, the applicant must be the prior registrant or the assignee of the prior registrant, the mark must be the same as the one in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration. Because the request to make special is just a request and not a formal petition, there is no petition fee or other fee associated with the filing.

A request to make special must reference the trademark application serial number, so it can’t be filed contemporaneously with a new application. Instead, we file the application and then, after being award an application number, file the request. The electronic TEAS filing system has a form for these requests. This allows the designated office to receive and review the request, which improves processing time.

When completing the form, you must provide sworn statements regarding the new application and the old registration. For instance, you must provide: (1) the registration number for the prior registration; and (2) a specific statement explaining that: (a) the mark in the new application is identical to the mark in the cancelled or expired registration; (b) the goods/services in the new application are identical to, or narrower than, the goods/services in the cancelled or expired registration; and (c) the owner of the prior registration is the same as the owner of the new application.

Petition to Make Special

A Petition to Make Special can only be used when you need to expedite initial examination of an application because there is pending litigation, actual or threatened infringement, or the need for a registration as a basis for securing a foreign registration. There are special requirements, and these petitions require a great deal of care and attention when preparing. They also have a small filing fee associated with them ($100 at the time of this writing).



Four Seasons Total Landscaping Trademark

Phoenix Mountain Preserve

I don’t write about current political events, but I’ve been pressured into writing this post because of its significance with respect to trademark law. Trademarks are fundamentally about protecting the public. Yes, trademarks can become valuable assets for big business, but they gain that value through reputation, goodwill, and recognition in the marketplace. The more famous a mark, the more likely it is to be protected.

Proper use and enforcement of trademarks ensures consistency in consumer experiences and thus protects the public. McDonald’s provides an easy example of the essence of trademark law: when you go to a McDonald’s restaurant, you know exactly what you are going to get. You may not love McDonald’s, you may hate it, but you know just what it is they are offering inside. You may believe that McDonald’s has low-quality cheeseburgers, but you have that perception of all McDonald’s, so that you know if you visit Phoenix for the first time and visit a McDonald’s, you can get the same low-quality cheeseburger that you always get back in your hometown of Duluth. Or, if you think the milkshakes you drink at your local McDonald’s has just the right amount of sweetness and is the perfect texture and consistency, then when you walk through a McDonald’s in Denver you are expecting that same thing. In other words, trademarks don’t protect quality levels; they don’t indicate that a product is high-quality (or that it is low-quality), they simply protect the expectation in or consistency of quality. You can get the same experience at this brand store that you do in this other similarly-branded store, whether that is good or bad.

Most people would agree that Four Seasons is a trademark with a fairly high reputation of quality. Anyone going to a Four Seasons-branded hotel will expect quality consistent with that reputation. And, most would agree that Four Seasons is a fairly famous mark. The owners of hotel chain spend a great deal of time and money advertising their brand, and most people in the country are aware of and recognize the trademark.

Famous marks are accorded broad protection. Marks like Coca Cola, Pepsi, Facebook, Nintendo, Adidas, Mercedes Benz – these are examples of famous marks. If you saw a Mercedes Benz-branded bicycle, you would probably think that the bike is made by the car company, or somehow affiliated with the car company, and you may also believe that the bike is of a fairly high-quality consistent with their automobiles. Fame is the ability of a mark to create an association between the product (bike) and the source of that product (Mercedes) even when the product is different from the source’s core products (automobiles). The more famous the brand, the wider that each of product. It is hard to imagine any product being marked with COCA COLA without someone thinking that it comes from the soda company in Atlanta. Coca-Cola dinnerware? Could happen. Coca-Cola bicycle? Sure. Coca-Cola spark plugs? Maybe?

Four Seasons is not so famous as Coke, but it is still pretty well known. And that is where our president became confused. His campaign, seeing the name “Four Seasons” in Philadelphia, immediately made the association between the brand and the luxury hotel chain and did no further checking. Of course, we know how that turned out.

Now, was this an example of trademark infringement? Has Four Seasons Total Landscaping stepped on the hotel chain’s rights when it picked its name?

Almost certainly not. While famous trademarks do have broad protection, there are limits. Landscaping services are very different from the hotel and spa services protected under the mark. Because the two sets of services are so different, in fact, they are able to coexist without the potential for consumer confusion. Which makes the President’s mistake all the more amusing – it was the exception proving that, for most people, similar trademarks for very different services shouldn’t be confusing.

P.S. – the comedy of errors continues, because on November 12, an individual in Hawaii filed for FOUR SEASONS TOTAL LANDSCAPING in connection with “entertainment services in the nature of a television series featuring comedy; entertainment services, namely, a website featuring information regarding a comedy television series; providing online, non-downloadable television programs and entertainment programming related to a comedy television series; and providing podcasts in the field of comedy television programming.”



Fee Changes at the Trademark Office

Piestewa Peak, Phoenix

In October, the Patent and Trademark Office raised most of its patent-related fees. Now, the other side of the building is raising its fees on trademark actions. The changes will become effective January 2, 2021. As with patent fees, these are the first trademark fee increases in almost three years, but they are being instituted in during a pandemic where many are struggling to meet their financial obligations.

The fee changes may reflect higher processing and examination costs for certain types and phases of applications, but they also incentivize certain behaviors. Fore example, the Office has long differentiated the fees between paper applications, electronic applications presenting customized information (“TEAS Standard” applications), and electronic applications adopting standardized or suggested wording (“TEAS Plus” applications). These changes continue that trend.

All fee changes can be viewed here.  Below I cover the fees for some of the more-commonly used actions.

Adjusted Fees

  • TEAS Standard trademark application filing fee increases from $275 to $350 per class
  • TEAS Plus trademark application filing fee increases from $225 to $250 per class
  • TEAS Plus applications that fail to meet the Plus standards will be assessed $100 penalties per class instead of $125 penalties per class
  • The fee to file a paper application increases from $600 to $750. Nobody should be filing paper applications anymore.
  • Petitions to revive an abandoned trademark application increase from $100 to $150
  • Ex Parte Appeals to the Board increase from $200 to $225 per class
  • Section 8 maintenance filing fee increase from $125 to $225 per class
  • Petition to cancel fee increases from $400 per class to $600 per class
  • Notice of opposition fee increases from $400 per class to $600 per class
  • 90-day extension requests for filing a notice of opposition increase from $100 to $200

New Fees

  • Deleting a class, or goods or services from a class, will now incur a $250 fee per class, if that deletion is made after a Section 8 filing is made. There is no fee if the deletion is made in a Section 7 filing before the Section 8 filing.
  • Filing a letter of protest against a third-party trademark application now incurs a $50 fee

 



Fee Changes at the Patent Office

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Always Stay Humble And Kind

Sometimes a prospective client calls in need of help prosecuting his or her patent application. Sometimes, the caller informs me that they wrote the patent application themself (a “pro se applicant”), that it has been rejected, and that they now want to consult an attorney.  I get about ten of these calls a month.  The caller usually wants me to write a response to the Patent Office.

Overend Park, Durango, Colorado

I do responsive work all the time; it is called patent application prosecution. I know pretty well what my average cost is for this kind of work, and I have found that, unfortunately, it often exceeds a pro se applicant’s budget. I usually try to explain the likely cost of such a response, and I try to explain why the costs can be so high.  In my experience, patent applications written by inventors require far more work than ones written by attorneys; one response is usually not sufficient – the first response is succeeded by one or more rejections.  Unfortunately, there usually aren’t ways to fix all the issues in a pro se application in one blow.

There are a lot of rules and pitfalls that an inventor doesn’t know about and will usually run afoul of when writing an application, and these then have to be fixed if the application has any hope of maturing into a patent. For that reason primarily, I don’t take on clients who have written their own applications anymore. I do caution them, however, that it will be difficult and expensive to get a patent, and so they should make sure that attorney they do hire discloses this to them.

I am fairly direct when I deal with clients. I always try to set expectations from the outset, because I don’t want them to be surprised with an outcome later on.  Sometimes, my directness is too blunt, and is interpreted as rudeness.  My wife likes to remind me of this.  I’m always trying to improve and better appreciate and understand each client and their unique position. While I will always tell clients only the truth, I am reconsidering my manner of delivering that truth.