17 Seconds #18

Trademark tips that should fit snugly on the screen of your favorite device (cough, iPhone, cough).

17 Seconds

What should you do if a competitor has filed a trademark very similar to yours? You basically have several bad options:

Option 1 – Do nothing. Hope they forget to file something (such as a Statement of Use) with the USPTO, go away, and/or go out of business. Issues: free, but outcome uncertain.

Option 2 – Convince them to file an Express Abandonment of their trademark application (http://teas.uspto.gov/rea/) and re-brand. Issues: less expensive, but hard to convince them to do so.

Option 3 – If their trademark has not yet been examined, then file a Letter of Protest with the USPTO (http://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip). If their trademark has been published, then file a Request for Extension of Time to File an Opposition (https://www.youtube.com/watch?v=RIvngyjFFdY). Issues: Letters of Protest can sometimes derail a bad trademark application, but Opposition proceedings have all of the issues of Cancellation proceedings (see below).

Option 4 – If the 30-day publication period has passed, then wait until they get a registered trademark and then file a Petition to Cancel. Issues: moderately expensive and takes a long time (probably $30K and 30 months), but outcome pretty certain (you win).

Option 5 – Litigate. Send them a C&D letter, be prepared to litigate in your market or theirs (if they file a Declaratory Judgment action). Issues: most expensive, most time consuming, but outcome pretty certain (you win).

Option 6 – Blog about the situation and let the matter play out in the court of public opinion. But be careful what you say so that you don’t find yourself on the receiving end of a defamation lawsuit! Issues: fun but risky.

Come to think of it, “Fun But Risky” would make a pretty good band name. You’re welcome.

17 Seconds #17

Patent tips you should be able to speak in one breath. OK, maybe two breaths.

17 Seconds

Going in, your odds of getting a patent are about 50/50. The deck is stacked against inventors. US patent law has confusing requirements (such as “nonobviousness”) and the courts and the USPTO are pretending there are other requirements (such as “subject matter eligibility”). Patent examiners are credited for “disposing of” patent applications, which means that they either issue patents (sometimes) or try to get you to give up (usually). I had one examiner tell me that he hadn’t even read one application until the fourth round of examination (i.e. the fourth “office action”)!

But if you do things correctly, such as always doing a patent search and filing a solid first patent application (whether provisional or nonprovisional), then you can push the odds closer to 55/45. Which may be the difference between getting a patent or not, between the expense (which is comparable to the cost of hiring a summer intern) being worth it or not.

And, breathe.