Export Marketing Resources

Should You Abandon Your Trademark Application?

Source: CtR Intellectual Property Co.

The short answer: It depends on whether the abandonment will work for you or against you.  Since even your decision to abandon your trademark application has its legal and practical implications, you should seriously considering hiring an experienced trademark attorney.

With or without an attorney, here are a few things that you must consider when deciding whether to abandon or not your application.

 

Consider the Grounds for Rejection

The action letter, or the rejection letter issued by the USPTO after the examining attorney’s initial examination of you application has been completed, contains the valid grounds for rejection. These grounds can range from technical grounds (e.g., procedural mistake) to substantive grounds (e.g. likelihood of confusion), and each ground should be answered satisfactorily by the patent applicant for the application process to proceed.

 

From the careful consideration of the grounds stated in the action letter, you can make a decision of abandonment or continuance. You may, for example, abandon the application in case of a rejection based on descriptiveness – if your mark is descriptive according to the standards set by the USPTO, then getting it registered doesn’t give you extra protection in case of an infringement. You can’t sue everybody who uses the descriptive words used in your mark since these are generic by nature.

 

If the rejection was based on the likelihood of confusion, you have to consider whether the costs in time, energy and money will be worth the benefits in name recognition and recall. You must consider, too, the possibility of a trademark infringement lawsuit if you continue using the mark.

 

Let’s say that you decide to abandon your application. You should ideally make an express statement of abandonment by filing a Request for Express Abandonment (Withdrawal) of Application through the Trademark Electronic Application System (TEAS), an online system at the USPTO official website.

 

Beware the Consequences of Abandonment

Lest you think that abandonment of your trademark application is easy – look, Ma, no consequences – it isn’t. Keep in mind that there are several ways of abandoning your mark and with these ways come consequences that you should be prepared to deal with.

 

Let’s assume that for one reason or another, you stopped using the mark for a prolonged period or you failed to maintain quality control over its use. Under the trademark laws, you are considered as having abandoned the trademark and, thus, you will lose the exclusive right to its use.

 

What can you do if the USPTO sends an action letter expressing final rejection of your mark as non-registrable? You can appeal to the Trademark Trial and Appeal Board in case the reason for rejection was substantive; file a petition to the director if the reason for rejection was technical or procedural; request the examining attorney to make another examination; or amend the application and seek for registration on the Supplemental Register in case of a descriptive mark-based rejection.

 

And, of course, you can abandon the application and give up the exclusive right to your mark.

 

Source: CtR Intellectual Property Co.

Establishing Evidence Of Distinctiveness On Trademark Registration

Source: CtR Intellectual Property Co.

A proposed trademark can be refused registration for distinctiveness reasons. Indeed, it’s important for applicants to establish the distinctiveness of their proposed trademarks as early as possible! But it doesn’t mean that a non-distinctive proposed trademark cannot be registered – there are remedies that can be done to still have it registered.

 

What to Do

Keep in mind that a proposed trademark that has been refused registration due to its non-distinctiveness still has hope, so to speak. But the applicant has the burden of proof in establishing that before its date of application, the trademark has a matter of fact become distinctive due to its application in the real world.

 

The applicant has to show reasonable proof and to file evidence, both of which should be contained in a statutory declaration, containing the following information:

  • What the mark is
  • How it was and is used
  • How long it was used and the specific circumstances of its use
  • How it became distinctive, particularly in terms of consumer recognition wherein the consumers recognize the goods or services sold under the trademark

 

Of course, the statutory declaration should also state that the applicant actually used the trademark or that it was used by another person with the authorization of the applicant/owner.

 

The information contained in the statutory declaration should also relate to the relevant period or the period before the date of registration, obviously to establish proof of its distinctiveness before said date. The statement should also be supported by sufficient and relevant evidence, such as packaging, advertisements, and photographs of the trademark being used.

 

When the Trademark Should Have Been in Use

Emphasis must be made that a long period of use of the trademark doesn’t necessarily mean that it has acquired a distinctive character. But it can influence the decision of the trademark examiners in determining distinctiveness albeit perhaps not as significantly as applicants would like.

 

Instead, the length of use is just among the factors considered when considering the distinctiveness of a proposed trademark. The other factors considered include the manner of its use, the extent that the public recognizes it through marketing, and even the volume of sales related to the goods or service.

 

What if there are conflicting proposed trademarks filed for registration purposes? If the Registry objects to an application for trademark registration due to an earlier application being either similar or identical, the former is deemed “provisional” until the latter becomes registered.  But the applicant can still take formal action to reach a resolution, such as by removing the specification of products and/or services in his application that have already been covered by the earlier application.

 

Once the earlier application has become registered, the Registry will then make a formal objection to the later application, usually through an examination opinion.

 

Source: CtR Intellectual Property Co.

Suggested Strategies For Trademark Protection In Hong Kong

Source: CtR Intellectual Property Co.

First off, it must be emphasized that getting trademark registration approval in Hong Kong doesn’t automatically mean protection in other jurisdictions, not even in the People’s Republic of China despite Hong Kong’s administrative status. Trademark holders should then adopt the necessary strategies to protect their trademark rights both in and outside of Hong Kong, and here are a few suggestions.

 

Claim Priority

Hong Kong is a member of the World Trade Organization (WTO) and its trademark laws are in accordance with the Paris Convention treaty. These facts are the trademark holder’s first line of defense, so to speak, in protecting his rights against infringement in other countries and territories outside of Hong Kong.

 

What does this mean? Basically, the trademark holder has the right to claim priority in other WTO member countries, said claim of which can be filed within six months after the filing of an application for Hong Kong trademark registration. The claim priority should be made within the same or similar category of products or services.

 

The WTO member countries include the United States, the United Kingdom, China, Canada, Australia, India, Ireland, Oman, Japan, Philippines, and the member countries of the European Union. In effect, you have protection in many, if not most, countries of the world where your trademark may be used for commercial (i.e., profitable) purposes.

 

Since the claim priority policies and process can be overwhelming considering the number of factors that should be considered, trademark holders and applicants are well-advised to hire an experienced trademark agent. The agent will handle the legal and technical matters, which are aplenty, that involves claim priority, among other trademark-related matters.

 

Distinguishable Mark

Check that the trademark is, indeed, clearly different from other trademarks used in the same or similar class of products and/or services. The clearly distinguishable trademark provides protection in two ways: first, it cannot be infringed on by others; and second, it will not infringe on trademarks already owned by others.

 

Keep in mind that individuals and groups can be made liable for trademark infringement even in cases of different products or services. For as long as the two trademarks seem the same, then there’s likely to be reasonable cause for trademark infringement.

 

Register in China, Too

If registering the Hong Kong trademark doesn’t provide protection in China, then the same rule applies to trademarks registered in China – these trademarks aren’t protected in Hong Kong, too. The bottom line: Even if it means added expense and effort, register the trademark in both Hong Kong and China, as well as in other countries where it will be used.

 

Be sure to register the trademark in English in its Chinese characters so that it can be used locally. The trademark in Chinese can either be a full translation or a transliteration. This is necessary to complement the original trademark and to provide it with a wide protection and appeal, especially in Hong Kong and China where both the English and Chinese languages are used.

 

Source: CtR Intellectual Property Co.

Points of Concern For Short-term Patents

Source: CtR Intellectual Property Co.

Short-term patents are also designed to provide protection for inventors and their inventions against possible unauthorized use of their products and/or processes. Keep in mind that their application in one of the designated patent offices can be problematic, not because of bureaucratic inefficiency but, more often than not, because of the complexity of the processes and papers required.

 

With that in mind, here are a few important points to consider before filing your short-term patents application in Hong Kong.

 

Hiring an Agent

Of course, filing a patent application can be done without an agent or a lawyer acting in behalf of the applicant. The do-it-yourself approach can yield effective and efficient results since the State Intellectual Property Office, one of three designated patent offices in Hong Kong, provides guidance on the process and papers required.

 

But there are also numerous benefits in appointing a Hong Kong patent agent to handle the Hong Kong patent application. For one thing, the agent can deal with the nitty-gritty details of the patent application, especially the parts that require technical and legal proficiency. The applicant then can concentrate on polishing the patent, so to speak, such that it may have commercial uses and possibly bring in a profit.

 

For another thing, the agent has the knowledge, skills and connections to facilitate the approval of the designated patent application. The connections are crucial in technical areas like drafting the patent documents – drafting is a highly technical skill that not many inventors possess.

 

Applicants are well-advised to research into the credentials of the agents, nonetheless. Looking into the agents’ backgrounds, track record, and expertise is a must, especially in high-stakes technology patents. The agent can file the patent in behalf of the applicant but the latter must have a valid address in Hong Kong for the service of documents.

 

The appointed patent agent should notify the Registrar of the address in Hong Kong where he either resides or conducts business activities. In fact, the applicant should ideally make it a point to visit the agent’s office as part of the background check.

 

Determining Uniqueness of Invention

Keep in mind that the patent being applied for should be unique, a task that can be carried out through the Internet. The Intellectual Property Department provides the general public with an online search system where anybody can search for both patents granted and published patent applications. The Hong Kong Intellectual Property Journal also contains the information and, in fact, the request for patent applications are first published here.

 

The applicant can determine whether a prior art has similarities or sameness as the planned patent application. Keep in mind that patent offices in Hong Kong and in other countries and territories have specific guidelines regarding uniqueness and novelty, and these guidelines can be overwhelming. This is where the usefulness of a Hong Kong patent agent come in.

Source: CtR Intellectual Property Co.

Who Can Apply For Hong Kong Patents?

Source: CtR Intellectual Property Co.

First off, keep in mind that applying for a China patent and in other countries doesn’t automatically provide patent protection in Hong Kong, and vice versa. Indeed, it’s important to file the appropriate patents in countries where the inventor wants his or her invention, whether a product or a process, to have protection!

 

With that being said, the important question is: Who can apply for Hong Kong patents? Under the Hong Kong trademarks laws, there are three types of applicants – individual, incorporated, and unincorporated. The applicant types are clearly stated on the Hong Kong patent application forms including Forms P4, P5 and P6 as well as P19.

 

Individual

The “Individual” applicant type refers to a natural person or natural persons applying for the patent jointly. The natural person may or may not be a resident and/or a citizen of Hong Kong, such as in cases where an inventor wants patent protection for his invention in Hong Kong.

 

There are also cases when a sole proprietorship and a partnership, both of which should be established in Hong Kong, files for patent protection. The rules for the names to be stated on the application are as follows:

 

  • For a sole proprietorship, the name of the sole owner and the name of his company should be stated but the box marked “Individual” should be checked. For example, Jack Chan trading as Chan & Co.

 

  • For a partnership, the names of the partners followed by the legal name of the company should be listed. At least two partners should be listed in case there are several partners. Again, the box marked “Individual” should be checked. For example, Jack Chan and Michael Yeoh trading as Chan & Yeoh.

 

The patent application is considered as a joint application so there’s joint ownership of the patent, if it’s approved.

 

Incorporated

For corporations incorporated in and outside of Hong Kong, the box marked “Incorporated” should be checked. Be sure to indicate the country or territory or area of incorporation where the corporation was established in the appropriate field of whatever form being used.

 

The information may also be entered by the Register of Patents in its database. The purpose: to enhance the transparency of the public records and to identify the patent applicant.

 

Unincorporated

Emphasis must be made that unincorporated associations and organizations aren’t considered as legal persons under the laws of Hong Kong. But an unincorporated entity can have legal capacity to own property including patents, a law in other countries and territories recognized in Hong Kong. In this case, the “Unincorporated” box should be marked for patent application purposes.

 

In Hong Kong, the Patents Registry of the Intellectual Property Department handles the Hong Kong patents application process. The Registrar of Patents has the legal authority to examine patent applications for their completeness, correctness, and compliance with the formal requirements. However, emphasis must be made that the Registrar of Patents doesn’t perform substantive search and examination of patents in terms of their inventiveness and novelty.

 

Source: CtR Intellectual Property Co.

Hong Kong Trademarks Registration Process Briefly Explained

Source: CtR Intellectual Property Co.

The Hong Kong trademarks registration process is among the world’s fastest in terms of timescale. Of course, the timescale will be different between applicants – for example, Applicant A may have technical deficiencies while Applicant B may have duplication of trademarks. But if there are no significant issues in the application, the process takes as little as six months to complete from receipt to registration.

 

Checking for Deficiencies

The Trade Marks Registry will conduct a thorough checking of the application forms and its attachments, if any, to determine their completeness, correctness, and compliance with the rules. The applicant is then well-advised to thoroughly check the forms so that all required information is stated.

 

While some changes to the application form won’t affect the filing date, there are major changes that can result in its rejection (e.g., changes to the trademark’s representation).

 

Search and Examination

If the Registry examiner finds that the application form and its attachments are in order, the documents will be forwarded for search and examination. Basically, this step determines whether the proposed trademark has the same or similar trademarks already filed or registered in respect to the same or similar class of products and/or services. If there are similarities, the application will be returned to the applicant for proper action.

 

The Registry examiner will also determine whether the proposed trademark satisfies the registration requirements stated on the Hong Kong Trade Marks Ordinance. He will then issue an opinion in writing – or a letter addressed to the applicant – that states whether the application is acceptable for Hong Kong trademark registration or not, usually when there are reasonable grounds for objection.

 

If the Registry has objections to the proposed trademark, the applicant is give six months to comply with the requirements and complete the documents, if necessary. The applicant may also request for a three-month extension after the six-month period has lapsed.

 

The applicant will be informed about the Registry’s objection to the proposed trademark and, if possible, suggest ways for resolving the issues. But if the objection still stands for any reason, the applicant can ask for a three-month extension but only under specific circumstances stated in the trademarks rules. The applicant may also call for a hearing.

 

Publication

If the proposed trademark has been found in compliance with the trademarks rules and regulations, it will be published in the Hong Kong Intellectual Property Journal. But the publication can also invite opposition to the proposed trademark, usually from a third party.

 

Registration

If there are no issues with the proposed trademark, it will be accepted for registration. The Notice of Registration will be published again in the journal.

 

Source: CtR Intellectual Property Co.

Checking For Duplications In Hong Kong Trademark Application

Source: CtR Intellectual Property Co.

While every person and organization has the right to register a trademark in Hong Kong, it’s important to conduct an initial search for possible duplication of trademarks before the Hong Kong trademark application. In some cases, another person or organization may have already applied for a registration or have already been granted a registration for the same or similar trademark. The trademark planned for registration may then be met with an objection from the Trade Marks Registry.

 

Take Advantage of the Services

Fortunately, the Hong Kong Trade Marks Registry offers applicants its Search and Preliminary Advice services wherein information about trademarks can be obtained from its records.  The Registry can perform a search of its database and provide a concerned application with a list of trademarks that are either similar or the same as the proposed trademark. The proposed trademark itself will be compared to the same or similar class of products and/or services; the thorough search is necessary to ensure there’s no duplication of trademarks.

 

The Registry also provides initial advice about the distinctiveness of a proposed trademark. Keep in mind that the proposed trademark should be, in the Registry’s words, sufficiently distinctive such that it can be easily distinguished from same or similar products and services offered by other traders.

 

Emphasis must be made that these Registry services aren’t free. The applicant must complete and submit Form T1 and pay the appropriate fee – HK$400 for every service and HK$200 for every added class of products or services, if any, as of this writing – to the “Trade Marks Registry, Intellectual Property Department, 24/F, Wu Chung House, Wanchai, 213 Queen’s Road East, Hong Kong”.

 

Factors to be Considered in Distinctiveness

Even before filing the trademark application and availing of the above mentioned Trade Marks Registry services, applicants are well-advised to check their proposed trademarks for initial determination of their “sufficient distinctiveness”. The most important considerations include:

 

  • Is the trademark distinctive?

 

The trademark should stand out from the rest of the crowd, whether it’s a word, a picture or a logo. If it’s a word, for example, it can be a made-up word that may or may not be associated with the business.

 

  • Is it a description of the products or services of your business?

 

The trademark shouldn’t be a description of your products and/or services or something that shows the purpose, quality and/or quantity, and/or the value of the products and/or services. The Registry will most likely reject your Hong Kong trademark application if it does any of these things. Examples include “Hong Kong Fashion” or “AAA Quality Watches”.

 

  • Is it a commonly used or well-known term used in industry, niche, or line or business?

 

The trademark shouldn’t be used by nearly every Tom, Dick and Harry engaged in the same or similar line of business – if it is, then the application will be rejected by the Registry. Examples include “V8” for automobiles, “Cow Leather” for bags, and “Swiss movements” for watches.

 

Obviously, applying for registration of the same or similar trademarks already owned by other persons and organizations isn’t allowed under the trademarks laws of Hong Kong.

 

Source: CtR Intellectual Property Co.

Who To Hire: A Local Or A National Attorney When Filing For A U.S. Patent Application?

Source: CtR Intellectual Property Co.

While the United States Patent and Trademark Office (USPTO) doesn’t actually recommend hiring a patent lawyer when filing for a patent application, experienced inventors highly recommend it for newbie inventors. The reason: The patent application and maintenance process including settlements and litigations can be complicated so much so that a non-lawyer can find it overwhelming. Even a single mistake can mean financial loss for the inventor, such as when other steal and profit from his inventions.

 

The next question: Who should you hire – a local lawyer or a national lawyer?

 

Advantages of a Local Lawyer

 

If you’re more comfortable working with a local lawyer, then hiring one makes sense. You may have established a good professional relationship with him, researched his background and track record, and relied on a mutual friend’s recommendation, among others. You may just like the convenience of meeting with your lawyer at a moment’s notice, so to speak, to present your prototype or process.

 

During these meetings, you can actually demonstrate your invention and show its novelty, utility and non-obviousness. You appreciate the proximity of your lawyer’s office in setting up appointments.

 

Advantages of a National Lawyer

 

But you may want to look farther than your neighborhood for many reasons. First and foremost, the patent law of the United States has a national (i.e., federal) scope so it’s neither governed nor regulated at the state and county levels. By its nature, patents are valid in the entire country although their validity will only be recognized in the United States, not beyond its borders, as a general rule.

 

The bottom line: The patent protection you’re seeking will have a national scope and, as such, hiring a local attorney particularly a member of the state bar isn’t as relevant as you may think it is.

 

There’s also the fact that patent attorneys should be registered with the USPTO for them to be recognized as authorized counsels of the inventors they represent. Furthermore, they are authorized to represent their clients in any place in the world.

 

This means that where the USPTO is concerned, you and your lawyer don’t even have to meet in person at any time during the patent application process. With technologies like emails, video calls, and messaging, you and your attorney can discuss issues, provide updates, and make decisions without meeting face-to-face.

 

In fact, foreign nationals can file U.S. patent applications through their U.S. attorneys without the need for face-to-face meetings! Every information can be transmitted and received through electronic means, not to mention that patent applications can be made online.

Your attorney’s location isn’t an issue with patent applications. The pertinent documents including the description, drawings and diagrams can be emailed in the required format. The reply from the USPTO can also be done in the same manner.

 

Instead of worrying about the proximity of the attorney to your home or office, you should concentrate on the appropriate qualifications.

 

Source: CtR Intellectual Property Co.

What To Expect During A Patent Infringement Lawsuit

Source: CtR Intellectual Property Co.

Patent infringements are a common occurrence, especially in a world where new products are designed, manufactured, and sold worldwide and where copycats are a dime a dozen. Many of these infringements become lawsuits or litigations that affect both the complainant and the defendant. The effects can be surprising, too, such as when the complainant ends up shouldering huge litigation expenses that could have been avoided if an amicable settlement was made. Here take a look on the U.S. patent infringement lawsuit for ease of understanding.

 

The bottom line: Be careful about filing a patent infringement lawsuit because it can have unforeseen consequences. But if you have a great patent lawyer and you have just cause, then you may well benefit from filing it. Here are a few things that you may want to know.

 

Specific Venue

 

All patent infringement actions have to be filed in the United States District Courts, the general courts of the country’s federal court system. The venue makes sense because patents are considered national in scope and, thus, their litigations should be heard in a national (i.e., federal) court.

 

Since there’s at least one judicial district for every state, as well as in the District of Columbia, Puerto Rico, Guam, the Northern Mariana Islands, and the United States Virgin Islands, the issue of geographical location shouldn’t be a big deal. Currently, there are 94 judicial districts in 50 states and the territories.

 

Prescription Period

 

The patent infringement action should be filed within six years, maximum, after the date in which the infringement occurred in order to recover damages. Unlike other statutes of limitations, furthermore, the six-year period can be extended when the parties agree to it. For example, a tolling agreement can be in effect while the settlement negotiations are in progress.

 

But the six-year prescription period cannot be extended by reason of concealment or fraud. For example, if you discover that your invention was incorporated in a machinery 10 years after the fact, you’re unlikely to sue for damages if the infringer covered up the use.  We have to say that the rules and regulations of patent infringements don’t automatically favor the patent owner or holder.

 

Judge’s Decision

 

While patent infringement lawsuits can be under a jury, the judge alone has the responsibility to interpret the claims for patent ownership made by the plaintiff and the counterclaims of the defendant. The judge and/or jury examines the patent and makes comparisons of the elements made in the lawsuit, said comparison being between the patent’s design and the infringer’s product or process.

 

From the comparisons made, the judge or jury then decides on the merit of the plaintiff’s claims actually and significantly cover the defendant’s product or process. In case of a read on, the legal term used to describe the plaintiff’s claim covering the product or process, then an infringement offense can be considered.

 

Source: CtR Intellectual Property Co.

Starting On The Right Foot With Your Design Patent Application

Source: CtR Intellectual Property Co.

The United States Patent and Trademark Office (USPTO) has strict requirements regarding United States patent applications for good reasons. Patents, after all, grant their inventors and/or owners the exclusive right to make, use and sell the products and/or processes covered. The USPTO are then extremely careful in granting patents and, in the process, can reject applications based on the smallest detail.

 

The bottom line: You have to start on the right foot when preparing your design patent application. You should ideally hire an experienced patent lawyer for this purpose. You must, however, still be on top of things, so to speak, by learning the basics including the ones discussed below.

 

Submitting the Right Documents

 

The USPTO provides two options for filing design patents: first, via paper application; and second, through its website (online). If you’re filing via the first option, you have to send the application documents by Express Mail. If you’re using the second option, you must convert these documents including the application and drawings to PDF format; there are electronic forms available on the USPTO website.

 

In both cases, you have to submit certain documents including:

  • The specification, a short written document
  • The drawings showing the design’s appearance, usually from several angles
  • The Declaration, the designer’s oath
  • The Design Patent Application Transmittal, a cover sheet
  • The Fee Application Transmittal Form, and
  • The payment for the filing fee (e.g., cashier’s check)

 

Be sure to read and understand every line of these documents as a precautionary measure. You don’t want your patent application returned or rejected due to a clerical error, among other possible mistakes. You also want to increase the chances of your request patent being granted, not to mention that the USPTO generally doesn’t give refunds even for rejected applications.

 

Getting the Entries Right

 

Due to the complexity of the documents, especially the drawings, you should seriously consider hiring experts including a patent lawyer and a graphic designer. You will still retain ownership over the patent once it’s granted obviously.

 

For the specifications document, here are a few things to get you started:

  • Write a couple of boilerplate sentences announcing your intention for a design patent in the preamble.
  • Make the specification, the section where you make an introduction of your design by name, as simple as possible.
  • Indicate previous patent applications related to your current application in the Cross References to Related Applications.

 

You can be descriptive with your invention description in the Feature Description field but avoid using flowery words, exaggerations and the like.

 

For the drawings, keep in mind that the USPTO prefers technical and stylized drawings of inventions. Every element, from stippling and linear shading to using colors and patterns, has a specific meaning so be careful about submitting haphazard drawings. While you can initially submit informal drawings, you will still be required to provide formal drawings by the USPTO examiner before your United States pattent application can be acted on.

 

Source: CtR Intellectual Property Co.

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