Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

I hope everyone is having a happy Thanksgiving. I searched through the patent office to find patents with a Turkey and I looked through the many utility patents and design patents. This led me to wonder if people really understand the difference between the two.

• Utility Patents: For any process, machine, composition of matter or manufacture

• Design Patents: For any original and ornamental design for an article of manufacture

In general terms, a "utility patent" protects the way an article is used and works ( 35 U.S.C. 101), while a "design patent" protects the way an article looks ( 35 U.S.C. 171). A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features.

Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

It can be to your advantage to simultaneously file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention.

But if you didn't file it simultaneously once the utility patent application is in condition for allowance, you may file a divisional design patent application based on the original utility patent application.

Another way to get design patent protection is to file a design divisional if a rejection is received and it doesn't look as though any of the claims are going to be allowed. 

In order to successfully follow this strategy the original utility patent application must filed with design application quality drawings and a brief description of the ornamental aspects of the invention.

What is an inventor's strategy for protecting intellectual property? Take a look at the examples of the utility and design patents that I posted here.

I doubt if Inventor Roy D. Williams ever sold this ingenious Turkey hunter's safety placard. And I wonder if anybody ever used the Retainer for dressed poultry invented by Anthony J. Volk.

Both patents have expired and are now in the public domain, so feel free to make, use and sell them if you wish to.

Entrepreneurs should consider using the vast amount of free technology that can be found in patents in the public domain. But I think that's a topic that will have to be dealt with in a future blog post.

Whether or not these patents are valuable can be determined by answering this question: would anybody have copied these products had they not received a patent?

The courts have ruled that to find infringement of a design patent, the accused product must be compared to the claimed design to determine whether the two designs are substantially the same.

To find infringement, the allegedly infringing product must incorporate the point of novelty of the claimed design. 

The standard of infringement involves two stages.

1. First, one must determine what the ornamental features of the patented design are and whether one or more of these were appropriated by the product alleged to infringe. If not, there is no infringement.
2. If there was appropriation of one or more of the unique features, then a second test is applied. One looks at both the similarities and differences between the two products to determine if there is sufficient overall similarity to deceive the ordinary observer. If so, infringement exists.

The protection offered by design patents is somewhat limited because courts determine infringement by comparing the design patent drawings to a competitor's "infringing" item. Consequently, the appearance of the drawings is critical in design patents.

Although the answer to the question as to the value of the design patent for the "hunter's safety placecard" is that nobody would have copied it, many companies recognize the value of design patents in various fields of invention.

For example, last month design patents were obtained in various industries for things like Semiconductors, transistors or integrated circuits  D625,695 (.PDF) and D624,890(.PDF), Parts, Accessories And Attachments For Vehicles D626,058 (.PDF) and Jewelry, Symbolic Insignia, And Ornaments D625640(.PDF)

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Thomas Alva Edison
Born Feb 11 1847 - Died Oct 18 1931

Electric Lamp
Patent Number: 223,898 (.PDF)

Inducted to National Inventors Hall of Fame™ in 1973

Invention Impact

Throughout his career, Edison consciously directed his studies to devices that could satisfy real needs and come into popular use. Indeed, it may be said that in applying himself to technology, he was fulfilling the ideals of democracy, for he centered his attention upon projects that would increase the convenience and pleasure of mankind.

One of the outstanding geniuses in the history of technology, Thomas Edison created the world's first industrial research laboratory. Edison earned patents for more than a thousand inventions, including:

• Incandescent Electric Lamp (PDF),
• Phonograph (PDF),
• Carbon Telephone Transmitter (PDF), and
• Electrical System for Automobiles (PDF).

In September 1878, after having viewed an exhibition of a series of eight glaring 500-candlepower arc lights, Edison boldly announced he would invent a safe, mild, and inexpensive electric light that would replace the gaslight in millions of homes; moreover, he would accomplish this by an entirely different method of current distribution from that used for arc lights.

To back the lamp effort, some of New York's leading financial figures joined with Edison in October 1878 to form the Edison Electric Light Company, the predecessor of today's General Electric Company.

On October 21,1879, Edison demonstrated the carbon-filament lamp, supplied with current by his special high-voltage dynamos. The pilot light-and-power station at Menlo Park glowed with a circuit of 30 lamps, each of which could be turned on or off without affecting the rest.

Three years later, the Pearl Street central power station in downtown New York City was completed, initiating the electrical illumination of the cities of the world.

In 1887 Edison moved his workshop from Menlo Park to West Orange, New Jersey, where he built the Edison Laboratory (now a national monument), a facility 10 times larger than the earlier one.

In time it was surrounded with factories employing some 5,000 persons and producing a variety of new products, among them his improved phonograph using wax records, the mimeograph, fluoroscope, alkaline storage battery, dictating machine, and motion-picture cameras and projectors.

During World War I, the aged inventor headed the Naval Consulting Board and directed research in torpedo mechanisms and antisubmarine devices. It was largely owing to his urging that Congress established the Naval Research Laboratory, the first institution for military research, in 1920.

Inventor Bio

Born in Milan, Ohio, Edison was an inquisitive child. By the time he was 10 he had set up a small chemical laboratory in the cellar of his home after his mother had aroused his interest in an elementary physical science book. He found the study of chemistry and the production of electrical current from voltaic jars especially absorbing and soon operated a homemade telegraph set.

In 1868 he obtained a position in Boston as an expert night operator for Western Union Telegraph Company; by day he slept little, however, for he was gripped by a passion for manipulating electrical currents in new ways. Borrowing a small sum from an acquaintance, he gave up his job in the autumn of 1868 and became a free-lance inventor, taking out his first patent for an electrical vote recorder.

In the summer of 1869 he was in New York, sleeping in a basement below Wall Street. At a moment of crisis on the Gold Exchange caused by the breakdown of the office's new telegraphic gold-price indicator, Edison was called in to try to repair the instrument; this he did so expertly that he was given a job as its supervisor.

Soon he had remodeled the erratic machine so well that its owners, the Western Union Telegraph Company, commissioned him to improve the crude stock ticker just coming into use. The result was the Edison Universal Stock Printer, which, together with several other derivatives of the Morse telegraph, brought him a sudden fortune of $40,000. With this capital he set himself up as a manufacturer in Newark, New Jersey, producing stock tickers and high-speed printing telegraphs.

In 1876 Edison gave up the Newark factory altogether and moved to the village of Menlo Park, New Jersey, to set up a laboratory where he could devote his full attention to invention. He promised that he would turn out a minor invention every ten days and a big invention every six months. He also proposed to make inventions to order. Before long he had 40 different projects going at the same time and was applying for as many as 400 patents a year.
 

Posted with the permission of the  National Inventors Hall of Fame™

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Recently I wrote a blog post regarding the alleged infringement of the trademark IHOP. Now the national drugstore chain Walgreens believes that the Wegmans logo looks too much like the Walgreens registered trademark (.PDF).

So they have opposed Wegmans new trademark registration application (.PDF) and filed a federal lawsuit claiming infringement. 

Take a look at the two trademarks. Do you think they are confusingly similar? Would you think that one company has anything to do with the other simply based on the font of the mark or "trade dress"?

What about just the W? Why does it look like the Washington Nationals logo? Check out the W on the cap and compare that to the Walgreens  registered trademark (.PDF) for the letter W.

Walgreens filed a trademark infringement lawsuit (complaint .PDF) at a federal court in Virginia against Wegmans, a western New York based supermarket chain, claiming unfair competition/ false designation of origin in connection with Walgreens’ U.S. Trademark Registration; trade dress infringement; dilution of Plaintiffs distinctive marks and unfair competition under the common law.

On the same day Walgreens filed in the United States Patent and Trademark Office before the Trademark Trial And Appeal Board a "Notice of Opposition (.PDF)" to the registration of the Wegmans trademark Application Serial No.85/037,348 for the mark WEGMANS.

Because both companies use a similar script in their logos, Walgreen Co. says in the complaint that the marks are confusingly similar and consumers could be misled into thinking the companies are connected.

I thought you just might find this information interesting, the complaint also alleges that both parties used the same Toronto design company, Watt International Inc. See paragraphs 15 and 20 in the complaint (.PDF).

It must be pretty uncomfortable between the Toronto design company and the law suit parties right about now. I wonder if they're using that design firm anymore? And if it is true why isn't the Toronto design company part of the lawsuit?

Wegmans spokeswoman Jeanne Colleluori told the Democrat and Chronicle of Rochester that the company also didn't think there was any possibility consumers could be confused.

While Walgreens says its "flying W" deserves trademark protection because it has been in use since 1951. But Rochester-based Wegmans said the scripted "W" it adopted in 2008 is actually a copy of logos used by the supermarket in the 1930s.

You might be wondering what happens when an opposition and a lawsuit are pending at the same time? I spoke to Buffalo trademark attorney Anne Downey of the law firm Downey and Downey and she conjectured that most likely the opposition would be suspended until the civil lawsuit was settled. And she cited the TTAB Manual Of Procedure (TBMP) [.PDF] section 510.02,

Suspension Pending Outcome of Another Proceeding "...To the extent that a civil action in a Federal district court involves issues in common with those in a proceeding before the Board, the decision of the Federal district court is often binding upon the Board, while the decision of the Board is not binding upon the court."

It's not uncommon to file an opposition before the Board rather than filing a lawsuit because the parties can resolve their issues in a less costly manner than a federal lawsuit. David Robinson of the Buffalo News reported that Wegmans spokeswoman Jeanne Colleluori said,"We were surprised to learn of this lawsuit, since Walgreens did not contact us with any concerns prior to filing it."

Any entity that thinks it will be harmed by registration of the mark has thirty days from the day the mark is published in the Trademark Official Gazette to file an opposition. The opposition may be filed with the Board and a complaint, including a request that the mark not be registered, may also be filed with a U.S. District Court, especially if issues other than registrability such as infringement are alleged.

Elements for the Opposition

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication. 15 U.S.C. §1063

An opposition proceeding is similar to a court proceeding in many respects except that:

• the Opposition is filed with the administrative tribunal of the USPTO: Trademark Trial And Appeal Board;
• the Opposition is less expensive;
• the Opposition is based on a written record; and
• jurisdiction is limited to the issue of registrability (no damages). 

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Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

WHAT CAN BE PATENTED

The patent statutes (35 U.S.C. 101) specify four classes of subject matter suitable for the grant of a patent. To be patentable, an invention must be directed to a:

• process
• machine
• manufacture, or
• composition of matter

Often a close look at the creative efforts that led to one patentable invention, will disclose related inventions that may fall within one or more of the other statutory classes of invention. For example, the invention of a new composition of matter, such as a chemical compound, may also involve the invention of a process for making the compound.

Since the compound is probably intended for a specific use, there may at the same time be patentable inventions directed to the

1. use of the compound in a process, or
2. as a material for an article of manufacture.

In addition to falling within one or more of the statutory classes, a patentable invention must meet three requirements, it must be:

• novel, (35 U.S.C. 102)
• useful (35 U.S.C. 101), and
• non-obvious (35 U.S.C. 103).

Novel

In general this means that the invention must not have been known or used by anyone in the U.S. or published or patented anywhere in the world before being invented by the person applying for a patent. Also, it must not have been published or patented anywhere in the world, or in use or on sale in the U.S. more than one year prior to the date of application for a patent.

Useful

The invention must have some identified use. The use may be very limited (this is often the case in the very early stages of development of an invention), but it must be present.

Non-obvious

When viewed against the prior art (i.e. public knowledge, prior publications, etc.) The invention must be non-obvious to a person of ordinary skill in the field to which the invention pertains. (Obviousness is a very subjective factor and is a common source of disagreement between patent applicants and patent examiners.)

THE PATENT APPLICATION

Basic to the philosophy of patents is that, in return for the patent, the inventor must fully disclose the invention. In so doing, the disclosure becomes a part of the technical literature and “promote(s) the progress of...the useful arts" as required by the Constitution (Article I. Section 8).

The full disclosure of the invention insures that the public will have possession of the invention and how to make and use it after the patent expires.

The descriptive portion of the patent application (and of the subsequently issued patent) is called the “specification”. It is a description that is required by statute (35 U.S.C. 112) to be written in sufficient detail to enable those skilled in the art to which it pertains to make and use the invention.

For example, a specification of a patent (or a patent application) on a chemical invention should be sufficiently clear and detailed to enable an ordinary chemist working in the same subject area to make and use the invention.

Patents directed to mechanical inventions will commonly include drawings. Patents directed to chemical inventions will commonly include working examples which may be written in a “cookbook” style to guide other chemists in the practice of the invention. The specification concludes with one or more “claims”. The claims are statements that define the metes and bounds of the invention.

THE PATENTABILITY SEARCH

The patentability of an invention is measured against what others have done before. A patentability search is simply an attempt to find out what has been done before so that the best decision can be made regarding whether or not to file a patent application.

Referred to by various names -- novelty search, pre-examination search (or “pre-ex search”) or simply prior art search, it involves searching the literature to uncover any publications that might affect patentability of the invention. Patentability searches are often limited to searching the patent files. However, a thorough search should also include the non-patent technical literature in the field of the invention.

If the search shows that the invention is not new, or is obvious from the prior art, it may save the time and expense of preparing and filing a patent application. Even if the invention appears patentable over the prior art, the search may uncover references that will serve as a guide in the drafting of a patent application and help to determine the scope of patent protection possible.

PATENT PENDING

When the patent application is filed in the U.S. Patent and Trademark Office, the filing date is recorded and the application is assigned a serial number (sometimes referred to as an application number). The serial number and filing date are important in the identification of the application, and may be useful in relating that application (or the subsequently issued patent) to other related U.S. patents or equivalent foreign patents or applications.

The application is then sent to an Examining Division where it is assigned to a patent examiner who has expertise in the technical field of the invention. The examiner will study the application, make a literature search (i.e., a “prior art” search), and issue an “Office Action” rejecting or allowing the application. In most instances, the first office action will be a rejection, which may be based on formalities or on the Examiner’s opinion that the same invention is shown in the prior art, or obvious from the prior art.

The applicant may then respond by amending the claims to overcome the examiner’s rejection. The application will then be reconsidered and a second office action will be issued. Commonly, the second action will be a “final” action from the examiner, i.e., an allowance or a final rejection.

On receiving a final rejection, the applicant has the right to appeal that rejection to the Patent Office’s own Board of Appeals and Interferences who will consider the arguments and render a written opinion affirming or reversing the examiner’s rejection.

The “patent pending” process, from filing to issue of a patent, requires an average time of approximately eighteen months -- if the process goes smoothly. If there are problems, such as the need to appeal, the process may take considerably longer.

THE PATENT TERM

The term of a U.S. patent begins on the date of issue and ends 20 years from the date on which the application was filed (subject to the payment of maintenance fees). During that time the patentee has the right to exclude others from making, using, or selling the invention in the United States.

Related post:

Patent Fundamentals (Part 1)

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