IPTech Insights

What are the best practices in choosing and using a mark?

Don't choose a mark that is confusingly similar to another mark. Trademark law is generally protective of "prior users" of a mark. When you file for a federal trademark registration, the examining attorney will determine whether your mark (taking into consideration the goods and/or services for which it is used) is close enough to a prior registered mark that it would likely confuse consumers. If so, the examiner will refuse registration.

What is the proper way to use the ®, TM, and SM symbols for marks?

Most of us understand that the symbols TM and ® are associated with trademarks; however, many do not understand the difference between TM and ®, how to use these properly, and the consequences for failing to do so. Furthermore, many people are unaware of the SM symbol. Here we discuss these three symbols, their significance, and proper use.

What is a trade secret, and how do I protect a trade secret?

A trade secret is any “information, including a formula, pattern, compilation, program, device, method, technique or process” that has actual or potential economic value by virtue of its being secret, and which you make “reasonable efforts” to maintain a secret.

Fair Use

What is the fair use doctrine?

The fair use doctrine is a limitation on a copyright holder’s exclusive rights to use or protect their copyrighted material. 

New 15-Year Design Patent Term in the U.S.

On May 13, 2015, the "Hague Agreement Concerning the International Registration of Industrial Designs" went into force in the U.S.

International Design Patent Application

When seeking foreign design patent protection, U.S. inventors in the past have had to file a design patent in each individual country.

Consequences of Improper Use of the ®, TM and SM Symbols

In earlier newsletters we discussed the proper use of the TM, SM, and ® symbols. To recap, TM stands for "trademark" and is used to indicate that you claim ownership of a mark that is used for goods but that is not yet federally registered. SM stands for "service mark" and is used to indicate that you claim ownership of a mark that is used for services but that is not yet federally registered. ® is used to indicate that your mark is federally registered for the goods or services for which you are using it. If your mark is not registered and is used for both goods and services, we recommend using the TM designation. 

Is Software Patentable?

In June 2014, the U.S. Supreme Court handed down a decision in Alice Corp. v. CLS Bank International that left software patentability generally intact but subject to some limitations.

Best practices in choosing and using a mark: choose a mark that is inherently distinctive.

Some marks are inherently stronger than others. When selecting a mark to use for your goods or services, consider that the "strength" of a mark falls along the following spectrum (beginning with the strongest): Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.

Best practices in choosing and using a mark: use your mark as an adjective, never as a noun.

On your website, and in all your marketing and promotional materials, you should never use your mark as a noun, but only as an adjective.