I found a trademark similar to mine. Can I still register it?

No, if the other trademark is registered with the USPTO for similar goods/services as yours the USPTO will likely reject your application. However, if you the other trademark is not registered, or registered but identifies dissimilar goods/services, you might be able to reject your application.

Can I register my name and logo in a single application?

No. While a trademark application can identify a variety of goods/services, an application can identify only a single mark.

How long does it take to register a trademark?

It depends largely on three things. If you (1) are already using the trademark, (2) the examiner allows the application to publish without issuing an office action, and (3) no one opposes your application, then your application will proceed smoothly. As of this writing, it is taking about one year from filing to registration if those three things occur. Prior to 2020, the timeline was faster. If one or more of those things are not the case, the process takes longer.

Can the USPTO reject my trademark application?

Yes. Broadly speaking, the USPTO rejects applications for substantive reasons and reasons that are less substantive. Two common substantive  grounds for rejection are likelihood of confusion and descriptiveness. These grounds usually require significant effort to overcome and sometimes cannot be resolved.

The less substantive rejections usually require less effort to resolve. For example, the USPTO might ask the applicant to rephrase the listing of goods/services because they are unclear. Similarly, the USPTO might require the applicant to rephrase the description of the logo (if the application is for a logo).

Do I need to use my trademark to register it?

Yes, but there is more to consider. The USPTO requires every applicant to prove that it is using the trademark in commerce before allowing the application to register. However, there is no requirement that you use the trademark before filing your application. The USPTO allows US applicants to file applications for trademarks they are currently using, as well as trademarks they intend-to-use. In the latter case, you must prove that you have started using the trademark before the USPTO will allow it to register.

Do I have patent rights if I write my idea down on paper, mail the paper to myself, and keep the writing safe and secure?

You can file a patent application by carefully describing and claiming your invention, along with variations. The application will consist of drawings, a written specification, and claims. Once filed, you will almost certainly receive a rejection from the examiner based on prior art references (and potentially other issues). You will need to respond with arguments and/or amendments until you persuade the examiner that you are entitled to a patent for one or more of your claims.

Although you can file a patent application yourself, it usually is not a good idea. Patent law is a highly technical and specialized area of the law. In fact, it is the only area of the law that requires a licensure in addition to a law license.

How do I file a patent application?

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Can I submit photographs or computer-aided design (CAD) drawings with my patent application?

Not for utility and design patent applications. The USPTO sets forth specific requirements for acceptable patent drawings. Most applicants hire specially trained patent draftsman to prepare their patent drawings. However, you can submit these types of images with provisional patent applications, which are less formal.

How many types of patents are there?

Three: utility, design, and plant. Utility patents are available for inventions that produce a new and useful result. Four categories of subject matter are protectable: articles of manufacture; machines; methods (including software), and compositions of matter.

Design patents protect purely ornamental designs on useful objects (e.g., the design of the ribbed, glass Coco-Cola bottle).

Plant patents protect distinct and new varieties of plants that have been asexually reproduced.

How long does it take to obtain an issued patent?

An especially fast design patent might issue six months from filing. Some patent applications (utility, especially) take many years from filing to issuance. Most patent applications, however, take two to three years.

Can I copyright my idea?

No. You cannot copyright ideas. For example, you cannot copyright the idea for your book or the concept behind your style of work.

What types of works that can be registered with the U.S. Copyright Office?

The U.S. Copyright Office registers the following categories of work: literary works, performing arts, visual arts, digital content, photographs, motion pictures.

How should I use the copyright symbol (“©”)?

You should affix a copyright notice to your original, creative works. A notice consists of three elements:

• The copyright symbol © (or for phonorecords, the symbol ℗ ); the word “copyright”; or the abbreviation “copr.”:

• The year of first publication of the work; and

• The name of the copyright owner.

Example: © 2017 John Doe

The use of a copyright notice is the responsibility of the copyright owner and does not require permission from, or registration with, the Copyright Office.

Why should I register my copyrightable works with the U.S. Copyright Office?

Among other things, timely registering your copyrights allows you to file a lawsuit for copyright infringement, and recover statutory damages if you can show the defendant committed copyright infringement. In some instances, you might be able to recover your attorneys fees, as well.

Can I file a copyright application for multiple works?

Generally speaking, no, but there are exceptions. As a general rule, a copyright registration covers an individual work, and you must prepare a separate application and submit a separate filing fee and deposit for each work you want to register. There are, however, some limited exceptions to this rule:

• When a number of separate and independent contributions are assembled into a collective whole (collective works)

• When multiple unpublished works, serials, newspapers, newsletters, contributions to periodicals, photographs, database updates, or secure test items meet Copyright Office requirements for registration on one application (group registrations)

• When multiple works are physically bundled or packaged together and first published as an integrated unit (unit of publication)

• When the copyright claimant for a sound recording and the musical, literary, or dramatic work embodied in the recording is the same individual or organization

What is IP litigation?

Intellectual property litigation is the process of bringing a lawsuit against someone who has infringed on your intellectual property rights.

Someone opened a business and started using the same name as my business. I never registered my name with the trademark office. Is there anything I can do?

Yes, potentially. As a business owner, you begin to develop “common law” trademark rights when you start using a name. You might be able to register your name with the USPTO. You might be able to enforce your common law rights against the new business owner. You should consult with a trademark lawyer to discuss the scope of your common law trademark rights.

Is there any downside to sending cease and desist letter?

Yes. There are two primary risks to sending a cease and desist letter. First, if you do not properly investigate the matter, you might accidentally send the letter to someone with superior rights to you. If that happens, the recipient might sue you for infringement and use the letter as evidence that you acknowledge there is a problem between the two of you.

Second, if you and the recipient are located in different states (e.g., Texas and Vermont), the recipient might file a declaratory action in its home state.  That is, the recipient might force you into a lawsuit in a less convenient location.

If I sue and win, can I recoup my attorneys fees from the defendant(s)?

Yes, but you probably will not recover your attorneys fees. Attorneys fees are recoverable in breach of contract cases. However, infringement actions often do not involve contracts. If you timely registered your copyrights, you can recover your attorneys fees in a copyright infringement lawsuit. As for patent and trademark infringement, attorneys fees are awarded in exceptional cases.

How long does it take to get to trial in an IP lawsuit?

Few cases reach trial. Of those that do, one year from filing to trial is somewhat fast. It is not uncommon for some cases to take several years from to trial.

What if the infringer’s conduct is an emergency and I cannot wait a year or longer for trial?

In some cases you seek emergency relief from the court (e.g., TRO, preliminary injunction). In these cases, you file your lawsuit and at the same time, or shortly thereafter, you file a motion with the court asking the court to stop the infringer’s conduct for two weeks (i.e., TRO), or until trial (i.e., preliminary injunction).