Newsletter Issue 78 - August 2015
In this issue:
Personal essay on the female inventor
Five Steps for Registering a Trademark in Pennsylvania
We've written about the benefits of state trademark registration.
There aren't many but if you believe state registration is right for
you, here's a brief guide on how to register your trademark in
Pennsylvania trademark law closely tracks some of the same principles, which apply to federal trademarks. These include the definition of trademarks and service marks, use of the International Classification System with respect to assigning trademarks to classes of goods and services; and the requirement that a trademark be used in the ordinary course of trade. Unlike federal trademarks, there is no provision to register a trademark on an "intent to use" basis. Also, as a side note, state trademarks are renewable every five years, you may abandon a state registered trademark by not using it, and your trademark is subject to cancellation should another trademark user consider your registration infringing. All the rules are embodied in the Pennsylvania Trademark Act.
Step 1 - Determine that the "trademark" you wish to register is actually a trademark
A "trademark" under Pennsylvania law is defined as "any word, name, symbol or device, or any combination thereof, used by a person to identify and distinguish the goods of such person, including a unique product, from those manufactured or sold by others and to indicate the source of the goods even if that source is unknown."
"Service marks" are defined as "any word, name, symbol or devise or any combination thereof used by a person to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services even if that source is unknown."
A "trade name," on the other hand, is defined as a "word, name, symbol, device or any combination thereof used by a person to identify the business, vocation or occupation of the person and distinguish it from the business, vocation or occupation of others." Trade names are not trademarks; however, if your trade name is the same or confusingly similar to a registered trademark, you may not have the rights to use your trade name and could be sued for trademark infringement if you do.
Marks that are not registrable include descriptive marks; immoral, deceptive or scandalous marks; flags or other symbols representative of the Commonwealth of Pennsylvania or the United States as well as other kinds of marks. If you're unsure that the trademark you wish to register qualifies as a "trademark", you should check with a trademark lawyer.
Step 2 - Make sure that nobody else is using your trademark or one that is confusingly similar.
Do not waste your time and money registering or attempting to register a trademark that is the same or confusingly similar to another business' trademark. Although commercial trademark clearance searches are the best option, they are expensive and require a trademark professional to interpret them. Alternatively, you may search the Internet for similar trademarks. Remember, similar marks are not only marks that look or are spelled the same but also sound the same. CAT and KAT, therefore, are confusingly similar.
Step 3 - Make sure that you are using the trademark in commerce.
Pennsylvania has no mechanism for reserving a trademark before you begin using it. Therefore, you must have a "bona fide use of the mark in the ordinary course of trade." Under Pennsylvania law a mark is deemed to be in use when "it is placed in any manner on the goods or other containers or the displays associated" with the goods. Service marks are deemed to be in use when used or displayed in the sale or advertising of the associated service.
Step 4 - File a registration application with the Commonwealth of Pennsylvania, Department of State.
The Pennsylvania trademark application is a simple document, which requires you to describe your trademark, the international class designation for the trademark, a description of the goods and services identified by the trademark, the date the trademark was used anywhere and the date upon which the trademark was first used in the Commonwealth of Pennsylvania. Also, if the trademark owner filed a trademark application with the United States Patent and Trademark Office, the application requests information about the application and whether and why it was refused, if applicable.
Step 5 - pay a $50 registration fee.
CAUTION: A Pennsylvania Registration does not entitle you to use the ® symbol.
That's all there is to it but if you have concerns over whether state registration is an appropriate mechanism for protecting your brand, the lawyers at Lipton Weinberger & Husick would be pleased to advise you.
The Female Inventor, a Personal Essay
Why I Did Not Take the Case
by Robert Yarbrough, Esquire
In my recent, and admittedly narrow, study of female
entrepreneurship, I found that 100% of female entrepreneurs have an
open, collaborative, consensus-based approach to business. If there
is not a group of persons with whom to discuss issues of her
business, the female entrepreneur will create such a group. Okay,
the cohort of my study is somewhat limited - one person; namely, my
wife, a serial entrepreneur who has started and run three
businesses. I've frequently contrasted her collaborative business
style with my own, which involves a high degree of manly
self-reliance, and, dare I say it, secrecy.
Which brings me to this month's topic - the female inventor. I was recently approached about accepting a representation to attack a patent through re-examination or through the other non-judicial avenues for killing a patent. The target inventor, a young woman not long out of engineering school, has created a very cool and interactive invention that would bring delight to anyone with even a modicum of curiosity. She raised several million dollars and launched a business to make and sell her patented invention, which you can buy today on Amazon.
The young inventor is also an entrepreneur. Consistent with the conclusions of my study, her style appears to be highly collaborative, with a wide and deep trail of disclosures spread over the Internet resulting from meetings, demonstrations and symposia in several countries. Even my brief review showed printed publications about the invention pre-dating the filing of her patent application by more than one year. The young inventor's patent may be at risk because of her own disclosures.
But should her patent be at risk?
The 'printed publication bar' prevents an inventor of any gender from obtaining a patent if the invention is described in a printed publication prior to one year from the date of filing of a patent application. A 'printed publication' can be a treatise, advertisement, catalogue entry, handout, document, web page, patent or published application or any other writing that is distributed or otherwise available to other people.
A secretive, self-reliant, manly person such as myself is unlikely to run afoul of the printed publication bar; however, a collaborative, consensus-based (female?) inventor may trigger the running of the bar in the ordinary course of life and without ever knowing that it happened. I believe that the printed publication bar creates a bias against female inventors and as such discounts the inventions of half the population.
Someone may challenge and may kill the young woman's patent, but it won't be me.
Robert Yarbrough, Esquire