Individuals and Small Businesses Get Some Help from the USPTO – the Patent Pro Bono Program

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Image from the Patent Pro Bono Launch at the Burlington Generator in Vermont (left to right): Jim Grace, US Senator Patrick Leahey (VT), Justin Daniels of Proskauer Rose LLP, and Jennifer McDowell, the USPTO’s Pro Bono Coordinator

Image from the Patent Pro Bono Program Launch at the Burlington Generator (Patrick Leahy second from left).

When it comes to turning a great idea into a viable business, one of the most significant hurdles for many inventors is the cost of applying for a patent.  The United States Patent and Trademark Office (USPTO) has recognized this impediment and has, with the urging of Senator Patrick Leahy, launched the USPTO Pro Bono Program (the “Program”), which is available to all inventors and small businesses with limited resources.

Established with the enactment of the America Invents Act, the Program aims to match inventors with volunteer patent attorneys who can assist them with their patent applications on a pro bono basis. In general, the Program is open to individuals and small businesses who meet the resource eligibility requirements.  The Program is managed regionally, with Vermont being a part of the Patent Pro Bono Program of New England.  To be eligible, individual inventors must have an adjusted gross income of less than 300% of the federal poverty guidelines (as of this writing, 300% of the poverty guidelines is $35,640 for an individual and $72,900 for a household of four, as examples) and small businesses must have a total gross income of less than $150,000.  In addition, any inventor seeking assistance under this program must have progressed in the development of his or her invention enough to be able to describe in sufficient detail to allow someone to make it.

Inventors wishing to take advantage of the Program must first apply through the appropriate regional program (the New England Program is available here: http://artsandbusinesscouncil.org/patent-pro-bono-program/), pay a small fee ($55 as of this writing), provide some documents to establish eligibility, and complete a training module to help them become more familiar with the patent process.  Keep in mind that further fees will be due as patent office fees, which can range from several hundred dollars to well over a thousand, must be paid by the inventor.

Pro bono services for patent work is a relatively new area, but has seen rapid growth since an initial pilot program in Minnesota in 2011.  However, since the volunteer patent attorneys are not obligated to accept every eligible inventor in the program, it remains to be seen whether there will be enough attorneys, or, more precisely, enough attorney time, to meet the demand for pro bono patent services as more inventors with limited resources become aware of the program.

Dunkiel Saunders is excited to be a part of the Program so as to assist Vermonters and those throughout New England in pursuing patents to their inventions.  The practice at Dunkiel Saunders is dedicated to serving all inventors and has a special emphasis on those focusing on alternative energy, education, health care, and other inventions that advance social and environmental causes.

Trademark Basics – Tips, Tools, & Helpful Explanations for Navigating the Trademark Registration Process

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When clients come in to discuss their potential trademark filings, they often have misconceptions about what makes a “good” trademark and what value a trademark can bring to a business.  That’s partly because trademarks (or “marks” for short) are easily confused with other types of intellectual property, especially copyright, which is a related but completely separate type of protection over creative works.  Confusion also stems from the somewhat counterintuitive nature of trademark law and the rules regarding trademark registration.

One way to understand what makes a “good” trademark is to know what the U.S. Patent and Trademark Office (USPTO) looks for when granting or denying trademark registration.  To that end, this will be the first in a series of posts on the most common hurdles to trademark registration that we see in our everyday practice.

Whether you’re considering a potential mark to use in your business or you’re already using a mark that you’re thinking about registering, familiarity with these basic trademark issues will make it easier to navigate the registration process and get the most brand value for your business.

DISCLAIMER – These posts are only intended to offer basic information about trademarks and cannot be considered legal advice.  If you have any questions about your particular trademark, contact us.

Trademark Registration Hurdle #1: Descriptiveness

It’s fairly common (and understandable) that clients want to their mark to convey to their customers what their product or service is.  However, from a trademark perspective, this can be problematic as we often have to warn clients that their mark is potentially descriptive.

From a trademark perspective, descriptiveness means that the USPTO may find that the mark describes qualities, ingredients, or characteristics of some or all of the goods or services offered under the mark.  The situation can be serious because a Descriptive mark may not be registrable, and thus not protectable, without resorting to significant expense.

One of the fundamental principles of trademark law is that the more unusual a mark is (i.e. the more unique or different from the goods and services it covers) the stronger the protection the mark offers.  The inverse is also true; the more descriptive the mark is of the goods and services, the weaker the protection—or in the case of merely descriptive marks or generic terms, no protection at all since the USPTO will completely refuse registration.  It’s therefore in a trademark owner’s interest to make the mark as non-descriptive as possible.  The more non-descriptive, the better protection the mark carries and the easier it will be to register with the USPTO.

But what does non-descriptive mean?

Trademarks are divided into four categories: Fanciful, Arbitrary, Suggestive, and Descriptive.  Fanciful, Arbitrary, and Suggestive marks are considered inherently distinctive and are registrable, while Descriptive marks are generally not registrable without evidence of acquired distinctiveness.  There is also a category called Generic, but there is no such thing as a “generic” trademark because generic terms can never be used as a trademark.

Marks that are Fanciful or Arbitrary have no connection to the goods and services they represent (famous examples include APPLE for computers or XEROX for copiers).  The difference between Fanciful and Arbitrary marks is that Fanciful marks are typically made-up words, e.g. GOOGLE and XEROX, whereas Arbitrary marks are actual words that bear no relation to the goods sold or services offered, e.g. APPLE, TWITTER, etc.

With Suggestive marks, there is a connection between the mark and the goods and services, but it’s only “suggested,” meaning that it requires the consumer to think or use their imagination to find the connection.  Last year a federal court in California held that PINTEREST was a “textbook example” of a Suggestive mark for a website that allows users to pin their interests on a virtual board and share it with others.

As mentioned above, Descriptive marks describe some aspect of the goods or services they cover.  For example, a few weeks ago the USPTO refused to register the mark WEEPING ANGEL, finding it merely descriptive of funerary urns featuring (you guessed it) a weeping angel (see case summary and photos here), and a recent federal case upheld NOPALEA as descriptive for a dietary supplement containing nopal juice.  Depending on how descriptive the mark is, a Descriptive mark may be able to “acquire distinctiveness,” which typically requires the mark owner to show continuous, exclusive, and substantial use of the mark in commerce (not always an easy burden).  Really descriptive marks (also called merely descriptive) cannot even use acquired distinctiveness to become registered.

Generic words are a step beyond describing the goods and services in that they use the actual words or synonyms for the goods/services in the mark.  Websites are commonly found to be generic—Hotels.com, Sportsbetting.com, and Buyautoparts.com were all refused registration because they are generic for the services offered by the website. See the case summary for Hotels.com here.

Choosing a less descriptive mark will help you avoid a descriptiveness rejection at the USPTO.  Moreover, beyond registrability, the less descriptive your mark, the stronger it is.  We’ll cover this more in an upcoming post, but for now, the chart below should be a useful guide:

GMIP-photo

Bottom line: Choosing a mark is a challenging task, and business owners often want to pick something that will give customers a good idea about the product or services offered under the mark.  But the more descriptive a mark is, the less trademark protection you get and the harder it is to register.  This can make it even more challenging to distinguish a business in the marketplace and make it harder to compete for customers in the long run.

Stay tuned for our next post on: Names in Trademarks

Brewing Technology At Keurig Green Mountain?

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More than just coffee at Keurig? Could we have known earlier?

More than just coffee at Keurig? Could we have known earlier?

Keurig Green Mountain (formerly Green Mountain Coffee Roasters) made a few headlines this summer when discussing its brand change, plans to broaden its current product offerings, and entering new markets.  A paragraph in an article at The Moltey Fool caught my attention:

Indeed, Green Mountain officials contend that while fiscal 2014 will be a time of focusing on the fundamentals, fiscal 2015 will be about launching new innovations. “It’s one format, (K-Cups), but the brand is actually one that going forward will be getting into other things — water filtration, carbonation. It will all be under the Keurig umbrella,” Riddick said. “The brand going forward must be known by consumers for things other than K-Cups and coffee.”

A brief search on Google Patents shows that GMCR has, in fact, been busy of late, submitting patent applications to the very technologies referenced in the paragraph above.  For example, at least the following applications have all been filed in the U.S. between December 2010 and August 2012:

  1. Method and apparatus for cartridge-based carbonation of beverages

    www.google.com/patents/US20130129870
    App. – ‎Filed Aug 2, 2012 – ‎Published May 23, 2013 – ‎Thomas J. Novak – ‎Green Mountain Coffee Roasters, Inc.

    Systems, methods and cartridges for carbonating or otherwise dissolving gas in a precursor liquid, such as water, to form a beverage. A gas source can be 

  2. Beverage formation apparatus and method using vibratory energy

    www.google.com/patents/US20120308688
    App. – ‎Filed Jun 15, 2012 – ‎Published Dec 6, 2012 – ‎Peter Peterson – ‎Green Mountain Coffee Roasters, Inc.

    Apparatus and method for forming beverages using a beverage cartridge and sonic energy. A cartridge may include a sonic receiver, such as a feature that 

  3. Compositions, systems and methods for portion-packaged soups and meals

    www.google.com/patents/US20120321756
    App. – ‎Filed Jun 15, 2012 – ‎Published Dec 20, 2012 – ‎Richard Estabrook – ‎Green Mountain Coffee Roasters, Inc.

    Methods and systems for producing a food product having a liquid component and an insoluble component, such as soups or stews. A food product assembly 

  4. Method and Apparatus for Cartridge-Based Carbonation of Beverages

    www.google.com/patents/US20110226343
    App. – ‎Filed Jan 31, 2011 – ‎Thomas J. Novak – ‎Green Mountain Coffee Roasters, Inc.

    Systems, methods and cartridges for carbonating a precursor liquid, such as water, 

  5. Beverage Formation Apparatus and Method Using Sonic Energy

    www.google.com/patents/US20110151075
    App. – ‎Filed Dec 17, 2010 – ‎Peter Peterson – ‎Green Mountain Coffee Roasters, Inc.

    Apparatus and method for forming beverages using a beverage cartridge and sonic energy. A cartridge may include a sonic receiver, such as a feature that 

Additionally, the applications listed above have 7 child applications (most unpublished) and I would imagine there will be more filings as the applications get closer to issuance.

Reviewing these patent portfolio additions, Coca-Cola’s purchase of a significant amount of Keurig stock should strike us as nothing unexpected – Keurig has been planning the expansion into carbonated beverages for many years. What this little analysis also confirms is that stock reports and other typical business information can be supplemented by trend analysis of patent filings (even if the publication information is a delayed representation of the actual patent filings).