The Who, What, Where, When, Why, And How Of Patents

Patent law in plain English. But not in that order.

Venice Canal

Why File Patents?

Patent laws exist. Just like tax laws exist. Smart companies take advantage of patent laws. Just like smart individuals take advantage of tax laws by itemizing their deductions on their tax returns rather than filing the short form 1040EZ and paying more taxes than they have to.

That said, patent laws do not have to exist in an ethical vacuum.

All modern patent laws derive from the epically awesome 1474 Venetian Patent Statute, which states, in part:

WE HAVE among us men of great genius, apt to invent and discover ingenious devices; and in view of the grandeur and virtue of our City, more such men come to us from divers parts. Now if provision were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventor’s honor away, more men would then apply their genius, would discover, and would build devices of great utility and benefit to our Commonwealth.

The goals of the original patent statute of Venice were noble and worthy: to entice men (and women) of great genius to come to Venice to enrich the lives of its citizens. Fast forward to 1789, when the US Constitution was written and the so-called “patent clause” (Article 1, Section 8, Clause 8) was enacted without controversy and WITHOUT DISCUSSION:

The Congress shall have Power To … promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Patent laws (such as these) based on the right ideas and ideals should, rightly, be noncontroversial. Where we get into trouble, as a society, is when the letter of the law departs from the spirit of the law. Such is the case with modern day patent trolls, who would have done nothing to enrich Venice and should have no place in 21st century US patent law.

So it is easy, I argue, for a patent lawyer to be ethical and idealistic: simply represent those clients who follow the spirit of the law. Some doubt that it is possible to identify such clients. To those doubters I say: (1) ask yourself why you went to law school in the first place and (2) ask your mother for her opinion.

With that historical preamble, I acknowledge that there are many valid reasons for getting a patent, including:

  • employee motivation/retention
  • defense (and quid-pro-quo licensing)
  • impressing clients (with shiny “patent pending” technology)
  • impressing inventors (actual and potential)
  • impressing your board of directors
  • scaring off competitors

Habit #2 of the “The 7 Habits of Highly Effective People” (book by Stephen R. Covey) is “begin with the end in mind.” So before you dive into the patent waters, know what your business goals are.

Where To File Patents

A US patent gives the patent owner the right to exclude others from making, using, and selling the patented thing in the US. Other countries confer similar rights on patent owners. In general, you should patent your product where your customers are.

If you are a US-only entity, then consider a US-only patent strategy. An advantage of pursuing a US-only patent strategy is that you can file a nonpublication request (with the initial US patent filing) and avoid having the patent application published 18 months after filing, which is the default. This way, if the patent application does not mature into an issued patent, then you can abandon the patent application and keep the patent application a trade secret. In other words, the secret sauce will only be revealed if/when a patent issues.

For most US startups, filing patents outside of the US is a waste of money. It generally costs four times as much to get patent protection in all of Europe as it does in the US. That said, there are two times when filing non-US (i.e. “foreign”) patent applications makes sense:

  1. First, if you have significant non-US business. What’s significant? I think 20%.
  2. Second, if you have a likely acquirer (or investor) located outside of the US.

As an aside, I don’t like the term “foreign” as it depends on one’s perspective.

Who Is The Inventor? Who Files The Patent?

First, who is the inventor? Steve Jobs may not have engineered the innards of Apple’s original iPod, but the product whose patent (correctly) bears his name was, by all accounts, his idea. As do many other of Steve Job’s inventions. Because that’s who the inventor is: the one who CAME UP WITH (i.e. conceived) the idea. NOT the one who built it (i.e. reduced the idea to practice). That said, products have many features, and if a particular feature was your idea, then you are the inventor of the embodiment of the product that includes that feature. Inventorship, therefore, is determined on a claim-by-claim basis and must be carefully reviewed for accuracy before a patent issues.

Second, who is listed first? The first-named inventor is the one whose name goes on the patent. The others get to be in the “et al.” category, which is somewhat less rewarding. So you should list the names of the inventors carefully on the patent application. (Perhaps this should be the first issue.)

Finally, although inventors are individuals, most law firms represent companies, and most companies require their employee/inventors to assign their patent rights to the company as a consideration of employment.

What Can Be Patented? What Should Be Patented?

A related question is “whether” to file a patent application. So I’ll address that question first. If you have a product that cannot be reverse engineered by virtue of its having been launched (where “launch” is defined as sold, offered for sale, publicly used, or published), then you should consider keeping your product a trade secret rather than pursuing patents. Trade secrets last as long as they remain secret. Patents last only 20 years from when you file them.

But if you do have a product/service that can be reverse engineered, then patents may be a good fit.

The legal requirements for getting a patent focus on legalese and are numerous and confusing. (In short, your product must be new, useful, nonobvious, and sufficiently disclosed.)

The plain English requirements for getting a patent, on the other hand, are two and product-based:

  1. If you have a “product” (which I’ll define more in a moment), that you believe to be better/faster/stronger than the competition, using features/benefits that YOU define (think marketing/sales sell sheet), then you have satisfied the first requirement (which is, essentially, the novelty requirement of patent law). Most startups can easily do this. It’s why you quit your day job and joined a startup.
  2. If your product has one feature/benefit that is unique to you (think “secret sauce”), then you have satisfied the second requirement (which is, essentially, the nonobviousness requirement in patent law). Not all startups can do this. Just because you have a winning product in the marketplace doesn’t mean you can win at the Patent Office. This issue occupies 95% of the time of patent practitioners (i.e. patent attorneys and patent agents). Recent US Supreme Court case law has made it extremely easy for the USPTO to reject patent applications as being “obvious” (in law) even though they are not “obvious” (in fact).

To keep things simple, I define “product” to include both “product” and “service.” And your “product” is anything you do sell, anything you could sell, anything you do license, anything you could license, anything you use internally, and any improvement to any product (think point release for software); whether or not you charge money for the product. Google Search is free for users, it is a product. The Twitter API is a product. Version 2.0 of your software is a product. So is version 2.1 And so on.

So if your startup is struggling to craft its patent strategy, know this: your product strategy IS your patent strategy. Before (and more on “when” below) you are getting ready to launch any product, you should consider filing a patent. Put a box around it, think how you’d position it in the marketplace, then you’re ready to patent it. Believe it or not, marketing/sales materials are as helpful (if not more helpful) than technical documents for writing patents. So the two most important people on your patent team are you CTO and CMO, not necessarily in that order.

When To File Patents

The ideal time to file a patent application is the day you can describe how to make and use your invention, and the ideal time to start the patent application process is two months before the day you can describe how to make and use your invention. A practical way to think about timing is to start the patent process two months before your scheduled product launch.

In 2013, under the guise of “patent reform,” US patent law changed from a first-to-invent system (i.e. the best patent system in the world) to a first-inventor-to-file system (i.e. like the European patent system). Under the old system, US patent applicants had a one year “grace period” between launch and when they could file for US patent applications. Under the new system, this grace period has been gutted, and, due to sloppy drafting, ambiguities in the new law have caused pragmatic patent practitioners to conclude that the US is the functional equivalent of an “absolute novelty” state (like Europe). In other words, you should treat the old grace period as if it no longer exists.

Under the old law, if you launched a product, then you could not get a patent in Europe, but you could, within one year of launch, still file in the US.

Under the new law, the only safe way to protect both US and no-US patent rights is to file patents BEFORE launching the product.

In addition, if you have filed a US provisional patent application, and you want to keep the benefit of the provisional’s filing date, then you have to file US (and non-US) patent applications within one year of the provisional’s filing date. (But most non-US patents are a waste of money, as discussed above.)

How To File Patents

You should budget one month for a patent search and a second month for writing and filing the patent application.

Why do a patent search? Because the whole trick to writing patents is navigating around the minefield of prior art. As the patent applicant, YOU get to define the product, YOU get to choose which features/benefits to emphasize. So you should do a patent search for the same reason the bear went over the mountain: to see what you can see. You will not be able to see everything, since a patent search cannot find everything (such as provisional patent applications). But it’s wiser to do a patent search than it is to try to navigate a minefield of prior art blindfolded.

Large companies (and the patent bar review firms that cater to their lawyers) will tell you not to do a patent search because (1) anything you discover needs to be disclosed to the USPTO and (2) if you find a patent and a later found to have infringed that patent, then you may be on the hook for triple damages.

These things are both true. But if you do the math (e.g. an expected value calculation or two), then you’ll discover that they are largely irrelevant for startups.

For small startups, the economics are quite different. First, you are hanging your hat on one or two core pieces of intellectual property, so it behooves you to figure out what the patent landscape looks likes. Second, you are not (yet) deep-pocketed, so you are not (yet) a target for patent litigation.

Do a patent search. Don’t skimp on it. It will inform you about whether, and, if so, how to file a patent application. Here are some possible recommendations for how to proceed after a patent search:

  1. Proceed with neither the product nor the patent, because someone else has the patent and the product.
  2. Proceed with the product but not the patent, because the technology is covered by an expired patent.
  3. Proceed slowly with the patent, because the technology area is crowded. It will take years and tens of thousands of dollars to get a patent. In this case, starting with a provisional patent application might make sense, to give you one extra year of “patent pending” status.
  4. Proceed quickly with the patent, because this is breakthrough technology. This is rare but exciting.

If you decide to proceed with a provisional patent application, then don’t skimp on that either. It is the foundation upon which your future IP house will be built. Filing a napkin provisional is like building your house on sand. Garbage in, garbage out (to mix my metaphors).

After completing the patent search phase, Clocktower (my firm) recommends, in about 40% of the cases, not to proceed with a patent application. We feel it is better to spend a small amount of money on a patent search rather than skip a search and waste much more money on a patent application that never should have been filed in the first place.

There are good and bad patent lawyers at big and small law firms. Clocktower likes to think that ours are good patent lawyers at a small law firm. The Clocktower method is simple: you teach us enough about the technology to write the patent, we teach you enough about the law to make the right business decision at the right time. At Clocktower, we give you the advice that we’d want to hear if it were our company.

That said, we’re not the right patent law firm for everyone. But we’re a good choice for many.

But not for patent trolls.

Erik J. Heels is a trademark and patent lawyer, Boston Red Sox fan, MIT engineer, and musician. He blogs about technology, law, baseball, and rock ‘n’ roll at This article was conceived on 2013-12-18 and reduced to practice on 2014-03-12 to coincide with a presentation by Erik at the Koa Labs Start-Up Club in Harvard Square, Cambridge, MA.

17 Related Posts

  1. Beware Of Patent Reform (2013-03-06)
    Goodbye first-to-invent, hello first-inventor-to-file.
  2. 17 Is The Most Random Number (2013-01-17)
    The Most Random Number Is 17.
  3. Top 10 Things BigLaw Patent Lawyers Don’t Want You To Know (2012-09-26)
    And won’t tell you. Srsly.
  4. Patent Trolls (2012-01-31)
    Patent Trolls Are Evil
  5. PCT Patents (2012-01-31)
    International Patents
  6. Software Patents (2012-01-31)
    US Software Patents
  7. Business Method Patents (2012-01-31)
    Patenting Business Methods
  8. Design Patents (2012-01-31)
    Design Patent Applications
  9. International Patents (2012-01-31)
    Foreign Patents
  10. Trade Secret Protection (2012-01-31)
    Protect Ideas With Trade Secrets
  11. Provisional Patents (2012-01-31)
    Provisional Patent Applications
  12. Clocktower’s Winning Clients (2011-05-24)
    $2 Billion In Angel/VC Funding + 10 Acquisitions By Public Companies.
  13. Men Of Great Genius: Venetian Senate, Patent Act of 1474 (2011-04-11)
    All modern patent statutes are derived from the Venetian Patent Act of 1474.
  14. Patent Law 101 (2011-01-26)
    An introduction to patent law in plain English.
  15. A Mere Mortal’s Guide To Patents Post-Bilski (Or Why §101 Is A Red Herring) (2010-07-09)
    It Don’t Mean A Thing If It Ain’t Got That Swing
  16. Drawing That Explains Patent Costs (2007-08-17)
    How to control the cost of filing a patent.
  17. Patents vs. Trade Secrets (2002-02-05)
    The advantages and disadvantages of protecting business ideas with patents and trade secrets.

Drawing That Explains ErikJHeels Blog

Technology, Law, Baseball, Rock ‘n’ Roll.

Why do I write about more than one thing? Because I think single-subject blogs are, for the most part, boring.

Do you like musicians who play only one note? Artists who use only one color? OK then.

So I drew the above drawing to explain this blog. I’m pretty sure that:

  • technology + law = patents
  • law + baseball = umps
  • baseball + music = organs
  • music + technology = MP3s

But I’ve not yet figured out the following:

  • A = music + technology + law
  • B = technology + law + baseball
  • C = law + baseball + music
  • D = baseball + music + technology

Let me know if you figure it out.

I do know this. As soon as I stopped caring what the “experts” said and started writing about whatever was on my mind, my blog started producing results. Your mileage may vary.

Erik J. Heels is a trademark and patent lawyer, Boston Red Sox fan, MIT engineer, and musician. He blogs about technology, law, baseball, and rock ‘n’ roll at

The Perfect Treehouse (Part 2)

Build one with your kids.

In the summer of 2003 and 2004, the perfect treehouse took shape in a four-stem maple in the back yard of a house in Acton, MA.

The Perfect Treehouse (Part 1)

The treehouse was built by @ErikJHeels and his kids. This is a video tour of the treehouse.

Part 1 – Red House, Red Cat House, Red Treehouse

Part 2 – Apple Tree Ladder, Foundation

Part 3 – Opening The Entrance Hatch

Part 4 – Opening The Back Hatch, First Counterweighted Hatch

Part 5 – Second Counterweighted Hatch, N-Hatches, Double-D Hatches, Emergency Escape Hatch

Part 6 – Trunks, Branches, Holes, Roof, Loft

Part 7 – Sleeping Arrangements For Five, Second Floor Carpeted Loft

Part 8 – View From The Treehouse, My Brother Mark

Part 9 – Chicken-Head Hatch, Safe Way For Kids To Descend

Part 10 – Alternate Way For Adults To Descend

Drawing That Explains Copyright Law

Copyright rights, unregulated uses, and fair use.

On 10/19/05, the daughter of one of my MIT friends shadowed me for a day at work as part of a school project. One of the good things about spending time with children is that it forces you to explain things in simple terms. That day, I drew lots of drawings. So here is another installment Erik explaining things with drawings.

In this drawing, I attempt to explain the wonderful world of copyright law. As an aside, I think that all intellectual property (i.e. patent, trademark, copyright, and trade secret) lawyers like writing about copyright. Because we’re all familiar with stuff that copyright protects – books, movies, CDs, DVDs, radio, TV, and the like. Even if, like me, they don’t practice copyright law.

What most people don’t appreciate is that there are three types of uses of copyrighted stuff. And not all of those rights are protected by (and hence can be legally controlled by) the copyright owner. Have you ever seen a copyright notice that says “It is illegal to make a copy of this copyrighted document”? Well, that’s not true, because it excludes fair use. I’ve often thought that the Copyright Act should be amended to say that all copyright rights are forfeit if an incorrect copyright notice is placed on a work. But that will never happen. On to my drawing.

On the right side of the drawing are the uses that are unregulated, one that are not covered by copyright rights. So you don’t need permission from the copyright owner to:

  • read a book
  • see a movie
  • watch the Red Sox at Fenway Park
  • borrow a book from a library

In the middle of the drawing are uses that are covered by copyright but uses that have been declared to be “fair use” by the law. So you can use copyrighted works without permission (to some extent) for:

  • commentary
  • parody
  • limited educational use

On the left side of the drawing are the uses that are exclusive to the copyright owners. These include the rights to:

  • copy the work
  • distribute the work
  • make derivative works from the work (such making a moving from a book)

My drawing could be better. And my explanation could be better. But again, I drew this for a child, so it’s a good place to start. The main point is that there are three classes of uses: unregulated, fair use, and protected. And you have to think carefully about which type of use is which. Many copyright owners fail to do this, unfortunately.

Creative Commons License

This article is licensed under a Creative Commons Attribution-Noncommercial-Share Alike 3.0 United States License.

Nine Principles Of Baseball And Life

Philosophy of Baseball: How to Play the Game of Life.

After my oldest son’s baseball game last night, I asked him, “What is the one thing that you can control in baseball?” He replied, “Your actions.” That’s the correct answer. It applies not only to baseball but to life. As I told my son:

“You can’t and won’t always be the fastest, biggest, or smartest in everything that you do. But you can give your best effort. You can choose how to act, and how to react. Responsibility is the ability to choose your own response (response + ability). I don’t care if the team loses. I don’t care if you make an error on every defensive play and strike out every time at the plate. I do care that you play the game correctly. Because in this league, you are learning not just about baseball but about life. You represent yourself, your team, and your town when you play. To paraphrase Albert Einstein, success in life is 10% inspiration and 90% perspiration.”

I then did what any lover of baseball and the law would do. I contacted the author of an inspirational article about baseball and life and asked for permission to reprint it on my blog. The author, Raymond Angelo Belliotti, graciously granted my request. His 2001 article entitled “Nine Principles of Baseball and Life” is reprinted in its entirety below. In 2006, the article later morphed into a book called “Philosophy of Baseball: How to Play the Game of Life.”

Nine Principles of Baseball and Life

by Raymond Angelo Belliotti

Baseball is about parents taking their children to local fields and teaching them the sport. Baseball is about the bonding of parents and children in the context of 150 years of history and the excitement of the infinite possibilities of summer. Baseball is about preseason practices, with everyone playing a variety of positions, no one keeping score, everyone energized, yelling, and engaged. Baseball is passing down an American legacy, reinforcing family love, teaching values and a way of life, sharing joy and triumph, sorrow and defeat. Baseball can illustrate and enhance the meaning in our lives. Baseball is only a distant cousin to organized games, all star tournaments, or names appearing in the local sports pages.

My Sicilian parents taught me values about life that are applicable to playing baseball. My father made it clear: if I acted inappropriately on a baseball field, no umpire, no coach, no league official would have to intervene. He would run onto the field himself and physically drag me off. He was not in attendance to be embarrassed by a son who had not learned proper values. The most important rule: approach any task with great enthusiasm, a positive attitude, and with appreciation for the opportunity to participate. My 9 principles of baseball are more fundamentally 9 principles of living a rewarding life.


Do not blame teammates, umpires, coaches, fans, or the position of the moon for your performance. Take responsibility for what happens on the field. Stand up, make no excuses, refuse the excuses that others might offer you. Excuses get in the way of learning because mistakes are denied. Be accountable. Remember you are not expected to be a perfect performer. No one is. Baseball is not an easy game to play.


Always hustle, run out every ground ball and pop up, encourage your teammates, especially after an error, bad pitch, or a strike out, carry yourself with pride and dignity. Do not in frustration throw equipment. Do not ridicule another team or an opposing player’s name, physical appearance, skill. Do not taunt. Do not distract an opposing player with low-level antics. Be positive with teammates. Never ridicule or criticize your teammates. They need your encouragement the most immediately after they have made a mistake. Show your teammates, your opponents, the entire world the values you hold dear by how you play.


Never Yield. Never Yield. Regardless of what the scoreboard says, you are never defeated unless you give up, unless you go belly up. No opponent can make you do this. Giving up is something you do. Regardless of what the scoreboard says, no opponent can extinguish the flame in your heart or crush the intensity of your will without your consent. Never surrender.


Ignore those things outside your control: the judgments of umpires, the conduct and ability of other teams, the weather, your amount of playing time, the final score (this is a tough one). Do not show frustration or disappointment. Do not allow your opponents to gain joy from your inability to cope with self-pity. Do not throw equipment or whine in anger or slump your shoulders. Such behavior impresses no one. Maintain your poise. Learn, prepare, and focus on the next event. We cannot change the past. Instead, we should focus on the next action with determination, joy, and resolve.


Your effort, your attitude, your commitment, and your approach to the game are under your control. Be enthusiastic, play with great effort, conduct yourself appropriately, meet this opportunity with great joy. Listen to your coaches. Be alert, play smartly, know the signs. You are always accountable. How you react to situations and circumstances reveals the person you are and the person you might become.


Focus on the current pitch. If you are a pitcher, what are you throwing now and where? If you are a fielder, what are you going to do if the ball is hit to you? If you are a base-runner, what are you going to do on a fly ball, line drive, ground ball, to the right side, to the left side? If you are a batter, what are you trying to accomplish on this pitch? If you are on the bench, how are you helping your team be successful?


The results of your performance are not fully under your control. The other team may be very good, or very bad. The bounces may go your way, or not. But your behavior and approach are under your control. At the end of the game, you, perhaps only, know whether you gave 100%, whether you did all you could to help your team. Those players who did are winners, those players who did not are losers, regardless of what the scoreboard says. Winners take care of the things within their control, enjoy their participation, and are justifiable proud of their effort. Losers make excuses, lose their poise readily, wallow in self-pity, and surrender at the slightest sign of adversity.


Players who are coachable are always trying to learn more about being successful ballplayers and people. They listen and apply what their coaches and teachers suggest. Are you coachable? If you are, you are a winner. If you are not, you are a loser, regardless of what the scoreboard says.


Be enthusiastic, positive, give 100%, understand that relentless effort in the pursuit of excellence is its own reward. The joyous warrior exemplifies the slogan “No Retreat & No Surrender.” Win with humility, lose with dignity.

Copyright Raymond Angelo Belliotti 2001. All rights reserved. Reprinted by Erik J. Heels in 2007 with the permission of the author. Raymond Angelo Belliotti is the Distinguished Teaching Professor in the Department of Philosophy at the State University of New York/Fredonia. He can be reached at

Dear Olympics: Don’t Steal My Logo!

The Who, What, Where, When, Why, And How Of Trademarks

By Erik J. Heels

First published 9/18/2015; Clockwork Design Group Blog; publisher: Clockwork Design Group, Inc.

In September 2016, the logo for the 2020 Summer Olympics in Tokyo was accused of being similar to the logo for Belgium’s Théâtre de Liège. In the wake of the controversy, the International Olympic Committee (IOC) scrapped the logo and started over ( But did they really need to?

Politically, starting over was a wise move. The Olympics conjures up images of victorious underdogs, good sportsmanship, and family values – not trademark bullying. This was not, after all, the first time a summer Olympics logo has been embroiled in controversy. In June 2007, there was ample controversy surrounding the 2012 London Olympics logo, including that it looked like cartoon character Lisa Simpson ( In January 2011, the 2016 Rio Olympics logo created controversy for being strikingly similar to the logo of Colorado charity The Telluride Foundation (

But what about legally? Did the IOC really need to abandon its proposed 2020 logo? Before looking at that specific question, let’s consider the roll of trademarks generally.

Why Register Trademarks?

The purpose of a trademark is to identify products and services with their providers. In other words, to be a “mark” of a “trade.” Best practices for trademarks include registering the trademarks that you are using and using the trademarks that you have registered. In the US, registration gives the trademark owner numerous important rights, including the right to exclude competitors from using confusingly similar trademarks for similar products and services.

Where Should Companies Register Trademarks?

In general, companies should register trademarks in the countries where they are doing significant business. If you have more than $500K/year of business in one country, then it makes sense to register your trademark in that country. Presumably the IOC does significant business in multiple countries!

Who Can Register Trademarks?

In the US, a trademark applicant must be using its trademark in interstate commerce (i.e. in multiple states or countries) in order to qualify for federal registration. So while a trademark law firm in Boston qualifies for federal protection for its trademarks (because its practice is federal law and its clients are located nationwide and worldwide), a criminal defense law firm in Texas does not qualify for federal protection (because its practice is state law and its clients are located only in Texas).

There are about 30 million companies in the US, but there are only about 4 million trademarks in the United States Patent and Trademark Office (USPTO) trademark database. The average company has about four trademarks: their name, their logo, the name of their primary product or service, and their tagline. This means that there are only about one million unique companies in the USPTO’s trademark database. Put another way, about 97% of US companies (29 of 30 million) have filed no trademark applications at all.

In the Internet age, it is likely that many companies’ products and services are being advertised and sold across state lines and that, as a result, many more companies qualify for federal trademark protection than file.

What Can Be Registered As A Trademark?

A trademark is anything that identifies the source of particular products and services. While “anything” can include oddities like colors, scents, and sounds, the vast majority of trademarks fall into two basic categories: words and logos. Of the 4 million trademarks in the USPTO’s database, about 70% are word trademarks (mark drawing codes 1, 4), and 30% are logo trademarks (mark drawing codes 0, 2, 3, 5).

Fewer than 300 total trademarks are of type “other” (mark drawing code 6), which mostly includes sound trademarks, including Darth Vader breathing, Homer Simpson’s “D’oh!” exclamation, and the famous NBC chime sound.

How And When Should Companies Register Trademarks?

Ideally, a company would conduct a trademark clearance search after choosing – but before using – its trademark. It is much easier to change a name before launching a product or service than after. And it is much easier to avoid trademark conflicts if you do your homework and conduct a proper trademark search. It can cost $50K or more for a startup to rebrand, but it costs about a tenth of that to protect its name.

Searching word trademarks is relatively straightforward.

Searching logo trademarks, not so much. The two best options for searching logo trademarks are the USPTO’s database and image-based search engines (sometimes called reverse-image search engines).

The USPTO publishes the US Trademark Design Search Code Manual, which assigns six-digit numbers (design search codes) to text descriptions of various graphic elements. Considering the 2020 Tokyo Olympics logo controversy, would the vertical line that forms the “T” in both logos be characterized as a rectangle (design code 26.11), a quadrilateral (26.13), or both? Does it matter that both logos may be characterized as “geometric figures forming letters, numerals or punctuation” (design code 27.03.01)? What if a similar trademark had all of the same elements but was not intended to form the letter “T”?

If you craft your logo trademark search too broadly, then you’ll have hundreds (if not thousands) of trademarks to review. If you craft your search too narrowly, then you’ll likely miss something important. A search for “plain single line circles” (design code 26.01.02) and “plain single line rectangles” (design code 26.11.02) yields, for example, 2795 results.

And how close is close enough? If you were the IOC, would you be concerned about any of these logos?





And if you are familiar with Boston, then you may be surprised to learn that the first logo above is not that of the MBTA! (Click on any logo to see its corresponding owner.)

If you were the IOC, would you be concerned about a theatre in Belgium? In the US, in order for the legal standard of “likelihood of confusion” to be met, both the trademarks and the products/services need to be close enough. Certainly the “T” portion of both logos are similar if not identical. And both the theatrical arts and sporting events are forms of entertainment. Is that enough? I think that if the Belgium theatre had been able to register the “T” portion of its logo alone, then certainly it could make a strong case for likelihood of confusion.

Even if you could search all 4 million trademarks (including about 1.2 million logos) with confidence, you would only be searching the tip of the trademark and logo iceberg, since there are many more logos in use than in the USPTO’s database. Fortunately, image-based search engines can provide results that may not be in the USPTO’s database. Google Images search can help find exact copies of images as well as images that are “visually similar” (whatever that means). TinEye reverse image search is another good way to find exact and similar versions of images.

Is Your Logo At Risk?

Anyone with a logo and customers in more than one state should consider registering their logo as a trademark. Anyone hiring a designer to create a new logo should consider the trademark implications of the new logo. For example, do you really want horizontal, vertical, and square versions of your logo? Each of those is a separate trademark that would need to be registered separately. In the old days, when TV and billboards were the norm for logos, marketing professionals were taught that horizontal logos were preferable to vertical ones. In today’s Internet, which is dominated by social media, square logos are the norm. The register-what-you-use-and-use-what-you-register rule gets complicated (and expensive) if you have multiple versions of your logo.

If you have a strong logo, as both Belgium’s Théâtre de Liège and Colorado’s The Telluride Foundation do, then you should keep an eye out for copycat logos and defend your turf accordingly. Just as registered word trademarks protect against words that sound the same, registered logo trademarks protect against logos that look the same. IMHO, the (now rejected) 2020 Olympics logo looks nearly the same as the logo for Belgium’s Théâtre de Liège. If I were a notable person, place, or thing with my own Wikipedia page (such as Belgium’s Théâtre de Liège), then I would complain if the Olympics copied my logo. Even if I weren’t notable then I’d likely complain because, hey, free press!

What Should The IOC Do Differently?

The IOC has filed nearly 200 trademark applications in the US alone, including for games located outside of the US. So presumably the IOC has a clue about trademarks.

Considering how poorly the IOC has done rolling out controversy-free logos, perhaps it should adopt a new approach. Rather than simply announcing that it has chosen a new logo, the IOC should announce a handful of logo finalists. Heck, the IOC could even let people vote for their favorites! Then the IOC would have less controversy and more buy-in.

To be fair to the IOC, the best trademark search in the world likely would not have found the similar logo in this case. In the US, a theatre with one location wouldn’t necessarily even qualify for federal protection. On the other hand, federal protection isn’t everything. Even a company with one store in one state has common law trademark rights that can be damaged by a confusingly similar national trademark.

One thing is for sure, those who know their logos best will spot copycats. Just like art, trademark likelihood of confusion is often in the eye of the beholder – you know it when you see it.

Erik claims to publish the #1 blog about technology, law, baseball, and rock ‘n’ roll at Brevity is not his strong suit.

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17 Seconds #16

Bite-sized patent and trademark goodness.

17 Seconds

There are about 30 million companies in the US, but there are only about 4 million trademarks in the United States Patent and Trademark Office (USPTO) trademark database. The average company has about four trademarks: their name, their logo, their product name or service name, and their tagline. This means that there are only about one million unique companies in the USPTO’s trademark database. Put another way, about 97% of US companies (29 of 30 million) have filed no trademark applications at all.

In the Internet age, it is likely that many companies’ products and services are being advertised and sold across state lines and that, as a result, many more companies qualify for federal trademark protection than file.