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

A Warm And Fuzzy Read For A Cold January Day In Arizona

Kami writes this post –

Christmas tree and presents in a corner of a room

Christmas Tree for a TCH House

For many years, I oversaw an extensive holiday giving program for my former law firm which involved coordinating the purchase of gifts for hundreds of people in need.  With the help of my colleagues, we fulfilled wish lists that contained everything from toys to tube socks to towels.  The individuals we helped changed every year with one exception: a small group of adult men with significant mental and physical disabilities who lived together in a group home in Tempe, Arizona.

We first “adopted” this group home around 2008 through a wonderful local organization called The Centers for Habilitation.  Even after changing law firms in 2019, I made sure to take this group home with me, and my new firm agreed to adopt them.  When I joined Thomas W. Galvani P.C. in 2021, I again couldn’t leave these men behind.  Tom and I have now begun helping these men out all on our own for the holidays.

Each year for the last 14 years, I have purchased gifts for and had a little pizza party with the gentlemen living in this group home.  Some men have come and gone, but there have been a few I have known for at least a decade.  Their wish lists for the 2022 holiday season were humbling as always and included new clothing, lunchboxes, puzzles, and keys and keychains to add to an ever-growing collection.

I was excited to take my daughter to the party with me this year, and I hope she will continue our family tradition of helping others when she becomes an adult.  While we don’t really believe in New Year’s resolutions at our house, if you are looking to start off 2023 by helping someone in need, we encourage to look at some folks that are often overlooked.  If you have any questions about TCH, please get in touch and we can help.  We hope your new year is off to a great start!



How To Sign A Trademark Filing

Sometimes clients are confused about how to sign a trademark filing like a trademark application or response to a non-final or final office action.

When we prepare a trademark application, we send it to the client for review and electronic signature.  The Trademark Office requires that electronic forms be signed with an “S-signature,” which is usually your own name between two forward slashes (“/ /”).

For example, if your name is John Smith, you might sign as “/John Smith/” Now, in the video above, I said that you “must” sign your name exactly as it appears in the “Signatory’s Name” section.  That’s not really true – you can actually sign it in a number of different ways.  But if you stray from your name, the Trademark Office may not accept the signature, so really you should sign it exactly the same way.  This will make things much clearer and straightforward for the firm and the Trademark Office.

The Trademark Office has a long list of good and bad examples of S-signatures here: https://www.uspto.gov/sites/default/f…



Patent Office Delays Non-DOCX Penalty Fees

The Patent Office is delaying the non-DOCX penalty fees it had said would go into effect at the beginning of 2023.

Family skiing at Nordic Valley, Utah

Family skiing at Nordic Valley, Utah

As part of its “modernization” efforts, the Patent Office has been pushing patent attorneys, agents, and pro se filers to use Patent Center instead of EFS-Web and to file in DOCX format instead of PDF.  I have previously written about some of the problems that has created.  Others have done so in much more detail and volume than me.

The Patent Office is pushing filers to use DOCX format instead of PDF because the Office claims it saves us the time and hassle of converting to PDF and because the Patent Center’s filing software can check DOCX files for common filing problems.

The few times I have tested Patent Center and filed DOCX documents, I have been disappointed.  The system warned me of problems that did not exist.  It never gave helpful feedback.  The most feedback it really gave was to auto-detect that my application had 3 independent claim and 20 claims in total.  I need to know this because it determines what fees apply.  However, two issues:

  1. I already knew those numbers.  I usually write those numbers down before filing so that I can check that the Office’s filing system has properly calculated the fees; and
  2. When it came time for Patent Center to calculate the fees, it prompted me to input the number claims in my application, rendering the auto-detect from earlier in the submission process seemingly unnecessary.

The biggest problem with the DOCX adoption is that Patent Center creates a PDF from the DOCX file that then becomes the official copy of the application.  That PDF, however, often would be inconsistent with the DOCX file.  For instance, when creating the official PDF, Patent Center frequently changes numbers, variables, and even operators in equations submitted in the original DOCX document.  The burden is on the uploader to check the PDF for consistency with the DOCX.  This is process requiring hours, however, and is not a practical activity when uploading finalized patent documents in an online environment that times out after inactivity.

The Patent Office has continually pushed penalizing applicants who did not include a DOCX file.  The Office was going to begin charging applicants $400 in non-DOCX penalty fees on January 1, 2022.  That was then delayed until January 1, 2023.  Thanks in part to efforts by Ptaaarmigan and a last-minute protest letter signed by several hundred attorneys, the Office has now delayed implementation of the penalty until April 3, 2023.

I suspect we will see a major revision – or at least an announcement of a revision – before April 3 which either allows filers to continue using PDF or withdraws the penalty fees.



What happens when a trademark owner dies?

When a trademark owner dies

Sky above Green River

Sky above Green River, Colorado

, there can be uncertainty in who owns the trademark or whether the trademark is even still valid and subsisting.

There is always an owner of a trademark, usually a company but sometimes an individual.  No matter who the trademark owner is, the trademark is valid only so long as it is being used; trademark rights depend on trademark use.

If a company owns a trademark, there are probably many people ensuring continuity of the business.  This helps ensure that the trademark will not accidentally become abandoned.

When an individual owns a trademark, there are some risks.  One of those is that when a trademark owner dies, the trademark may abandon.  This can happen in a few ways.

First, trademarks at the Trademark Office require periodic maintenance.  If the trademark owner fails to file the trademark maintenance paperwork in time, the Office will cancel the trademark registration.

Cancellation of a trademark is not the same as abandonment of a trademark.  However, one of the other possible consequences of the death of the trademark owner is that there is simply no one who is using the trademark anymore.  In other words, if the trademark owner was the only person selling the products or offering the services, then when the trademark owner dies, there won’t be anybody left to sell those products or services.  It no one is selling the products or services anymore, then the trademark cannot be used.  Therefore, the trademark becomes abandoned.

When a trademark owner dies, the trademark will transfer as an asset of the estate.  If it was specifically identified in the will, then it would transfer according to that.  If not, then it would be handled in probate like other personal assets.

If a new person or entity is going to take over the trademark and provide the goods or services that the deceased previously did, then the new person should own the trademark.  To do that, you must a trademark assignment with the Trademark Office.  Most often, this means that the estate’s personal representative will need to sign the assignment.

A trademark attorney or an estate attorney can prepare the trademark assignment.  However, if the estate attorney prepares it, he or she must be careful, because there is specific language that must be included when transferring a trademark.  That language is not commonly used in other areas of law.

Once the assignment is fully signed, it must be recorded at the Trademark Office to actually effect the name change in the Trademark Office records.



Is Signing a Contract that Is Wrong Risky?

Corporate attorney Kami Galvani writes today’s post about signing a contract that might be incorrect, might include provisions that are not applicable to your situation, or might have terms with which you cannot comply.

Cloudy sky over Phoenix Arizona

Cloudy sky over Phoenix, Arizona

The Dilemma

I’ll pose a hypothetical conversation with a hypothetical client:

Attorney: “Hey Client, I was looking over that Supplier Agreement you asked me to review.  I noticed that it requires you to have an umbrella insurance policy with a limit of at least $5 million.  If I recall, your umbrella policy has a limit of only $2 million. Is that correct?

Client: “Yeah, that’s right, and we explained that to our prospective customer’s procurement coordinator.  He said they aren’t allowed to amend that section of the contract.  But he reassured me that for our deal, it’s not a problem, so we can just sign it as is.

Unfortunately, this type of situation happens quite a bit in contract negotiations.  One party questions a provision, and the other party tries to minimize its significance.  While everyone’s intentions at this stage are usually genuine and in good faith, signing that business contract can create real problems.

Pitfalls of Friendly Reassurance

If you sign an agreement, you will be bound by its terms – all of its terms.  After that, your failure to meet contractual obligations can expose you to a lawsuit for a breach of contract, as well as other consequences.

While you may get a verbal, or even an email, promise that something in the contract won’t be enforced, if push comes to shove, the language in the contract will almost certainly rule in the event of a dispute.  Essentially, a court will reason that if something was important enough to put into the signed contract, it must be what the parties intended.  There is no reason for the court to examine less formal documents that may show something which contradicts the clear language of the contract itself.

Exceptions?

It’s possible that a dive into case law would reveal that, in certain cases, certain writings may override the language in a signed contract, but you should not rely on this remedy being available.  If you are signing a contract, review it carefully.  If there are terms with which you cannot comply, change the terms or refuse to sign.

Tough Negotiators

From time to time, I encounter what I’ll call “bully customers” who state that if you want their business, you must sign their form agreements as provided without making changes.  If this happens to you and you cannot meet the customer’s contractual requirements, I encourage you to continue to negotiate.  A reasoned explanation as to why you need the change often helps.

While customers may not want to redline their standard terms and conditions, they may be willing to change certain terms in an ancillary document like an addendum or a statement of work.  If you do go this route, make sure that the ancillary document specifically states that it is meant to supersede the language in the original agreement and be sure that it is signed by both parties.  Finally, it is always wise to consult with business counsel prior to signing any material contract or ancillary document; he or she can advise on the proper way to ensure that you will not be bound by terms that you know you cannot meet.



Changing the Applicant Name in a Trademark Application

In the past year, I have dealt with one issue more times than I have in the previous ten years of practice: correcting or changing the applicant name in a trademark application.  Apparently trademark applicants are mis-identifying themselves more frequently in trademark applications than they used to.

Changing or correcting a trademark applicant’s name is not always a straightforward or safe thing.  The reason for the correction dictates whether it can be made at all.  Some changes are simple, some are complicated, and some will potentially invalidate the trademark application.

Different Types of Changes

A change of the trademark applicant name may need to be made if any of the following have occurred:

  • Owner changed its name without a transfer of assets
  • Transfer of ownership of the trademark
  • The owner was identified incorrectly in the original trademark application filing

Trademark Filing Basis Can Limit the Change

The law limits the extent to which a trademark applicant can change an owner’s name on an intent-to-use trademark application.  You generally cannot assign an intent-to-use trademark application to a third-party.

Any name changes of intent-to-use applications must reflect only changes of ownership to a business successor for the goods and services connected to the trademark.  Otherwise, you must wait until the trademark application’s filing basis changes to “in-use,” such as after filing an Amendment to Allege Use or a Statement of Use.

Entity Name Change

Sometimes, a company changes its name without merging or selling.  When the company simply undergoes a name change, then updating the applicant name in the trademark application is fairly easy.  Go to the Electronic Trademark Assignment System (ETAS) and then select “Change of Name”:

Change of name form for a trademark application

ETAS Change of Name Form for a Trademark Application

You may also need to change the entity name if the owner was a person and changed his or her last name.  For instance, if the owner got married and adopted a new last name, she could change her name in this way.

Transfer of Ownership

If the trademark has changed hands, then you should record a transfer of ownership or a trademark assignment.  Typically, this will happen when one company buys a product line or another company.

The Trademark Office requires submission of the document effecting the transfer of ownership.  This document will become public record.  For this reason, big agreements sometimes include a separate trademark assignment as an exhibit to the agreement.  This allows the attorneys to file only the exhibit without revealing all the details of the big agreement.

Correcting a Mis-Identified Applicant

When a trademark application initially identifies the wrong applicant, real problems can arise.  Changing the applicant name in a trademark application like this has to be done with extreme caution.  It can result in the invalidation of the application.

First, a trademark application must always identify the owner of the trademark as the applicant.  When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment.  The application is then void and invalid.

If there was a mistake in identifying when the applicant’s name was entered, then this might be correctable.  There are only a few situations in which this correction can be made:

  • If the trademark owner provided its trade name, or its dba, but that name is not actually its legal name, then the Trademark Office does permit a correction. You can fix the application to change the applicant name from the dba to the entity’s actual legal name.
  • If the application identified a division of the company, rather than the company itself, this mistake can be corrected.
  • If you forgot to put something minor like “The” or “Inc.” then in most cases this mistake can be corrected. The Trademark Office will not tolerate any change more significant, however.
  • If there is an internal inconsistency in identifying the owner, then the Office will permit correction of the applicant name. For example, in some places, you may have listed the owner as a company and in other places as an individual; the Office will let you correct this to make all references to the owner consistent.
  • If the owner changed its name before filing the application and used the old name on the application, then the owner may correct the applicant name to the new name. You may be required to explain that the previous name and current name identify the same enterprise.
  • Identifying partners in a partnership, rather than the partnership itself, can be corrected.

Some specific situations that cannot be fixed:

  • Trademark applications that identify an employee of a company as the owner, rather than the company itself, cannot be corrected.
  • If the trademark application identifies a first company as the trademark owner, but prior to the filing date of the trademark application, that first company had actually already transferred the trademark to a second company, then the trademark application is void.
  • If a trademark is owned by a joint venture, but the application only names one of the joint venturers, then the application is void.
  • If the trademark application identifies a related company which is not the owner, then the trademark application is void. For instance, if a sister company owns the trademark application, or if a subsidiary company owns the application.


Rubik’s Cube Intellectual Property

In honor of the Rubik’s Cube craze that has recently hit the Galvani household, we decided to take a closer look at how this iconic toy was created and what type of intellectual property protection it has enjoyed over the years.

Rubik's Cube

Rubik’s Cube

Erno Rubik was a Hungarian design teacher who loved puzzles.  He set about creating a toy based upon geometry in hopes of helping his students learn about three-dimensional objects.  Rubik invented a toy with 26 tiny cubes in six different colors joined together into one big cube that he called the “Magic Cube” in 1974 and by 1980, it was being sold in toy stores world-wide under the name “Rubik’s Cube.”  This famous puzzle toy has been the subject of various infringement suits over the last forty years.

Rubik received patent protection for the Rubik’s Cube toy in Hungary in 1977.  He obtained little patent protection world-wide, however, only receiving patents in Belgium and the United States.  Rubik was granted a U.S patent on March 29, 1983 for a “Spatial Logical Toy.”  Rubik granted the toy company Ideal Toys a license to sell the Rubik’s Cube toy.  Larry D. Nichols had a 1972 patent for a “2x2x2 Puzzle with Pieces Rotatable in Groups,” which was for a 2×2 puzzle held together with magnets.  He sued Ideal Toys for patent infringement.  After losing this infringement case in 1984, Ideal Toys appealed and, in 1986, a court determined that the original Rubik’s Cube toy did not violate the Nichols patent, but a pocket-sized version of the Rubik’s Cube did.

The U.S. patent for the Rubik’s Cube expired in 2000, but Seven Towns, the exclusive licensee of Rubik’s Cube’s IP rights at the time, had a creative strategy for finding protection in another way.  Seven Towns attempted to register trademark – or trade dress – protection in the shape of a Rubik’s Cube toy to prevent knock-off versions.  It registered the cube shape with the European Union Intellectual Property Office in 1999.  Trade dress and trademark protection can be extremely valuable since they can potentially continue forever in spite of the expiration of related patents covering the underlying product.  The EUIPO granted the trademark, and Seven Towns enjoyed its protection until it was challenged in 2006 by another toy company called Simba Toys.  After a 10-year battle, Simba Toys won its argument that the cube’s shape contained a technical solution that should be protected by a patent, not a trademark.  The EU canceled the Rubik’s Cube trademark.

These days, you can find plenty of knock-off puzzles, but most major retailers continue to sell the original Rubik’s Cube and related puzzle products under the Rubik’s name which are marketed as the “World’s No. 1 Puzzle.”



Office Action Response Deadline Change

Trademark owners will soon have a shorter office action response deadline.

SpaceX flies over Phoenix after launching from Vandenberg

SpaceX flies over Phoenix after launching from Vandenberg

Beginning December 3, 2022, the Trademark Office will cut the normal six-month response period to just three months.

When a trademark application undergoes examination, the Trademark Office sends an office action to raise and address issues with the application.  Until now, applicants have had 6 months to respond to the action.  This was codified in Trademark Office regulations.

Now, applicants have less time.  As part of the implementation of the Trademark Modernization Act, applicants will now have to respond within 3 months of the issue date of the office action.  However, applicants can “buy back” the full months by paying a $125 extension fee.  This will let them have the full 6 months for a response, but applicant have to file the request before the 3-month office action response deadline ends.

This system is similar to the one that the Patent Office uses.  In the Patent Office, the 6-month office action response deadline is shortened to 3 months, and applicants must pay extension fees for individual months.  The extensions are purchased in single-month increments, so applicants can buy an extension for the fourth month, or for five months, or for six months.  The extensions under the patent system are not due preemptively; applicants request them when filing the response in the fourth, fifth, or sixth months.

Not all trademark applications will actually have the abbreviated office action response deadline.  Applications filed into the US through the Madrid Protocol will continue to retain the 6-month response period.  More information is available from the USPTO here.



Converting to a Provisional Application

Clients often file a provisional application

Collegiate Mountain Bike Nationals, Purgatory

Collegiate Mountain Bike Nationals, Purgatory

and then file a non-provisional patent application on the same or similar subject matter within a year.  Clients and attorneys sometimes loosely refer to this as converting a provisional application into a non-provisional patent application.  It isn’t really.

What they are really doing is filing a non-provisional patent application and making a domestic benefit claim to the provisional application.  Because the content of the provisional is often so similar to the non-provisional, “converting” is shorthand, but ultimately a misnomer.

Converting to a Non-Provisional Patent Application

There is actually a technical meaning for converting a provisional application into a non-provisional patent application.  It is when you make a specific request to the Patent Office and ask that it take the provisional you filed and treat it as if it were a non-provisional patent application.  If you request this, your provisional better be in good enough shape to actually work as a non-provisional patent application.

Converting in this way doesn’t happens a lot, but it can be a useful loophole in certain circumstances.  For instance, normally, a design patent application cannot claim priority to a provisional application.  This means that often one must file a provisional and a design patent application at the same time, rather than delaying the design patent application.  However, you could potentially file a provisional and then convert it into a non-provisional.  Later, if the drawings in the non-provisional support it, you could file a design application claiming priority to the non-provisional.  This would make it seem like your design application’s priority actually extends back to the provisional’s filing date, which it does, because the provisional became the non-provisional.

Converting to a Provisional Application

This article is actually about the opposite type of request: converting a non-provisional patent application into a provisional application.  This asks the Patent Office to turn a non-provisional into a provisional for any number of reasons (none of which you have to disclose).

I recently had to do this when a client, intending to file a provisional application on its own, navigated the filing system incorrectly and accidentally filed a non-provisional application.  This kind of mistake is surprisingly easy to make in the Patent Office’s new Patent Center / DOCX filing system.

Why Convert?

If the content of the application is limited, as a provisional often is, then filing a provisional application as a non-provisional can be disastrous.  If the mistake is not caught early and the application publishes, it will create a disclosure.  That disclosure will have prior art effects against competitors but also potentially against the patent applicant.  And, if the disclosure is limited, there may not be enough substance to support decent claims.  This can ruin the patentability of the idea and potentially destroy a whole family of patents.

So, if you inadvertently filed a non-provisional application and meant to file a provisional, you can make a special request.

The applicant must make a written request and submit it to the Petitions Office.  The request must clearly identify the patent application and request conversion, preferably by identifying the correct applicable regulation.  Additionally, the applicant must pay fees.  The fees are actually fairly affordable.  In addition to the provisional filing fees (which would have had to have been paid originally anyway), a processing fee ($50 at the small entity rate) and a surcharge ($30 at the small entity rate) are due.  Unfortunately, the Patent Office will not refund the fees associated with filing the non-provisional.

The Petitions Office will consider a request which is proper.  The Petitions Office is quite backed up as of the publish date of this article, and it may take several months for review.  Another petition and filing fee can expedite review of the petition if the applicant wants faster consideration.



Trademark Coexistence Agreement

National Mall in August

National Mall in August

A trademark coexistence agreement is an agreement between two parties about their respective use of the same or similar trademarks.  They generally allow two trademark owners to use identical or similar marks, usually in a manner designed to avoid consumer confusion.  They are helpful in several situations.  A trademark coexistence agreement can be used to resolve disputes between two parties, or to prevent potential disputes, or to overcome rejections by the Trademark Office.

Trademark Coexistence Agreement to Resolve Disputes

Trademarks are fundamentally intended to prevent consumer confusion.  When two marks are the same or similar, the public can be confused about who the source of the product or service is.  This can flare as a trademark infringement dispute, where one party sues – or threatens to sue – the other party for having a trademark which is too similar to its own.

If the parties can resolve this dispute, they will usually execute an agreement.  The agreement might require one party to change its name, or it might allow that party to continue using its name, perhaps for a short period of time or maybe even permanently.  For those latter two options, a trademark coexistence agreement – or at least a coexistence provision – will be used.

To Prevent Disputes

Sometimes, before a client files its trademark application, it will conduct a pre-filing clearance search to see if there are other similar or identical marks already registered or used.  This allows the client to evaluate the risk of proceeding forward.  Occasionally, a trademark applicant will proceed forward even though there is a similar trademark already registered, because the applicant feels the mark is different.  In that event, the applicant will sometimes proactively reach out to the prior trademark registrant and request a trademark coexistence agreement to potentially head off even the unlikely risk that consumers will be confused.

To Overcome Rejections

When a trademark application is filed, the Trademark Office examines it before it will register the trademark.  During examination, the Office will reject the trademark application if it finds any registered marks which pose a likelihood of confusion.

The rejection will stand, and the application will become abandoned, unless the applicant responds and overcomes the rejection.  Often times, the applicant can present arguments based on case law or evidence.  Sometimes, however, there may be reasons to present other arguments.

A trademark coexistence agreement is persuasive evidence in response to a rejection.  While not completely binding, the law gives significant weight to a trademark coexistence agreement.  Examiners will generally, but not always, withdraw a rejection the applicant has a trademark coexistence agreement.  However, Examiners will refuse to accept those agreements when they fail to address real conditions and concerns.

Trademark Coexistence Agreement Elements

The Trademark Office’s desire to see “real” agreements reflects the need for a trademark coexistence agreement to be more than just an agreement to use two similar marks.  It must actually address the likely concerns of not just the trademark owners but the consumers as well.  For instance, it could discuss concerns such as:

  • The level of experience and familiarity the two parties have with the respective industry and their customers
  • The similarities and differences in the marks’ sight, sound, and appearance
  • The similarities and differences in the goods and/or services
  • The similarities and differences in the customers and channels of trade
  • Restrictions on any future trademark filings of the parties
  • Amendments to the trademark application or registration details
  • Geographic restrictions on the parties’ respective uses
  • Goods and/or services restrictions on the parties’ respective uses
  • Industry restrictions on the parties’ respective uses
  • Any limitations to how the parties’ trademarks will be displayed or styled
  • Any disclaimers that either of the parties should use
  • Any restrictions on how the parties’ goods and/or services may be advertised
  • Any restrictions on the channels of trade for the parties’ goods and/or services
  • What the parties will do in the event of actual confusion

Trademark coexistence agreements are not the right solution in all situations.  In some cases, a trademark coexistence agreement can weaken a trademark owner’s rights and should be avoided.  Speak with a local trademark attorney if you think you need a trademark coexistence agreement or have been approached by someone requesting you to sign one.