Should I use Inc or LLC in my Trademark?

Look at the way well-known brands use their company name as a trademark or services mark. They usually do not include an entity descriptor–e.g. Inc., Corp., Ltd., or LLC–in those brand usages. For example, the company behind the Starbucks brand is “Starbucks Corporation.” However, you rarely see the word “corporation” used in connection with Starbucks when Starbucks is used as a trademark. Instead, “Starbucks Corporation” is mostly used in the fine print when referring to the corporation rather than the brand, such as in their copyright notice.

One reason for that is marketers probably do not want unnecessary legal language cluttering up their beautifully crafted names/brands. Another reason is that trademark law somewhat discourages the inclusion of entity descriptors in trademarks.

The Lanham Act provides for the federal registration of …

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The US Patent Application Process Flow Chart

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Seeking a patent is not a file it and forget it endeavor. Instead, it involves a process where work is likely required in multiple phases. The process of obtaining a utility patent in the US generally involves novelty searching, application drafting, waiting for the patent office to review the application, and negotiating with the patent office about the scope of patent protection. Each of those phases is shown in the U.S. Patent Application Process flow chart above, which I will describe in more detail below.

Patent Novelty Search

The first question is whether or not to have a patent novelty search performed. A patent novelty search is designed to tell you the likelihood of obtaining a patent on your invention. You are not required to have a search performed …

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Invention is the Mother of Necessity

Inventions arise when there is an unmet market need. Inventors who perceive a unmet need are motivated to fulfill it due to economic rewards of inventing, such as money or fame. Some inventions fit this path, like the cotton gin and the steam engine. Necessity is the mother of invention–as they say–or is it?

What if the opposite is also true?

When Nikolaus Ott built his first gas engine, in 1866, horses had been supplying peoples land transportation needs for nearly 6,000 years, supplemented increasingly by steam-powered railroads for several decades. There was no crisis in the availability of horses, no dissatisfaction with railroads.

What if “many or most inventions were developed by people driven by curiosity or by a love of tinkering, in the absence of any initial demand …

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Burnt Dough and the Difficulties in Patent Drafting

“[E]ven if, as plaintiff argues, construing the patent to require the dough be heated to 400 degrees to 850 degrees Farenheit [sic] produces a nonsensical result, the court cannot rewrite the claims. Plaintiff’s patent could have easily been written to reflect the construction plaintiff attempts to give it today. It is the job of the patentee, and not the court, to write patents carefully and consistently.” – Colorado United States District Court

Patent claim drafting requires careful attention. The difference between the use of “to” and “at” in a claim directed to a method of producing dough, resulted in the difference between a worthless patent claim and a patent claim that might have had value. This is why going the DIY route with a non provisional utility patent application is

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Transferring Ownership of a Trademark

“Use of the mark by the [trademark] assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing… Therefore, if consumers are not to be misled from established associations with the mark, [the mark must] continue to be associated with the same or similar products after the assignment.” – Fifth Circuit Court of Appeals

sugarbustersregCo-author and publisher, Sugar Busters LLC, purchased the registered service mark SUGARBUSTERS (Reg. No. U.S. 1,684,769). Then Sugar Busters LLC tried to sue on Ellen Brennan for trademark infringement based on the registration, but lost when it sought a preliminary injunction. Sugar Busters lost because the registered mark was for retail services, which were not related …

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How to Control Inventions and Patents Resulting from Joint Development

“…each coowner [of a patent] is ‘at the mercy’ of its other co-owners.” – Federal Circuit Court of Appeals.

STC.UNM (the licensing arm of University of New Mexico) was at the mercy of Sandia Corp. regarding STC’s patent.

STC sued Intel Corporation for infringement of U.S. Patent No. 6,042,998 (the ‘998 patent) in the case of STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. 2014). STC and Sandia co-owned the ‘998 patent.

But, Sandia refused to join the lawsuit against Intel, “prefer[ring] to take a neutral position with respect to this matter.” This led the court to dismiss the infringement suit against Intel.

STC was at the mercy of Sandia’s refusal to join the lawsuit. Maybe this lawsuit against Intel could have resulted a large money judgement for STC. But, …

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Design Patent Drawings: Surface Shading

DesignPatentCokeBottleDesign patents seek to protect the appearance of an article of manufacture, such as a product or a portion of a product. Therefore, design patents consist mostly of drawings of the invention with a small amount of text. The drawings mostly define the scope of protection that will be provided under the design patent. Therefore, the details of the drawings for design patents are very important.

Surface shading in the drawings may be important to determining whether the patent design covers a particular third party product (e.g. an alleged infringer). The patent rules provide regarding design patent drawings, “Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented.” MPEP 1503.02. The rules further provide, “Lack of appropriate surface shading in the drawing …

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Patent Drawings: System Diagrams

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When drafting an patent application that has components communicating or connected to each other or to a network, one or more figures showing system level interactions between the components should usually be included. Such figures are common in patents directed to software, methods, computers, or other electronics. As the Manual of Patent Examining Procedure provides, “In a typical computer [patent] application, system components are often represented in a ‘block diagram’ format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines.” MPEP 2164.06(c).

One requirement in writing a patent application is to enable one skilled in the art area of the particular invention to be able to make and use the invention without undue experimentation from reading the patent application (which later …

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Patent Drawings: An Introduction

LegoFig4_US_Pat_3005282One approach to drafting a patent application is to start with the drawings. I think this approach is the probably the best for those embarking on DIY patent drafting.

Once you have the drawings created, writing written description of the patent application, is partially a function of describing what is shown in the drawings and expanding beyond what shown in the drawings.  In other words, the drawings can provide the initial road map for drafting the written description. The drawings can be road map because once the parts of the invention shown in the drawing are labeled, you can proceed by describing the parts of the invention and the way that operate or interact with other parts with reference to the parts shown in the drawings.

So, under one …

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What Galileo’s Pendulum Clock Teaches About Inventing

HowWeGottoNow_SixInnovationsThatMadetheModernWorld

Fifty-eight years in the making, his slow hunch about the pendulum’s “magical property” had finally begun to take shape. The idea lay at the intersection point of multiple disciplines and interests: …Physics, astronomy, maritime navigation, and the daydreams of a college student: all these different strains converged in Galileo’s mind.

“After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head,” said Nikola Tesla. Telsa call this the incubation period, which precedes direct effort on the invention. Science writer, Steve Johnson, calls it a slow hunch; an idea that comes into focus over a long time.

Johnson discusses several examples of how slow hunches develop in his excellent book, Where Good Ideas Come From

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