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USPTO Expert (Sep 18, 2008 2:12:32 PM)
Welcome to today’s On–Line chat, we will begin answering questions at 2:00pm. Please note that all questions posted are not answered, we try to select the questions that appeal to the overall audience. While you wait for the chat to start please visit our transcripts from previous chats at http://www.uspto.gov/web/offices/com/iip/transcripts.htm.
robert (Sep 18, 2008 2:15:02 PM)
excuse me sir, does that mean 2 eastern time?
USPTO Expert (Sep 18, 2008 2:15:13 PM)
Robert - you are right it is Eastern time
Nick Leggett (Sep 18, 2008 2:15:51 PM)
I am an inventor with three patented inventions. What is the next due date for nominations for the Patent Public Advisory Committee (PPAC(? I missed the 2007 date because it had been changed from the due date in 2006.
USPTO Expert (Sep 18, 2008 2:16:30 PM)
Nick – Information about the Patent Public Advisory Committee can be found at http://www.uspto.gov/web/offices/com/advisory/notices/nomineeinfo.html
Mom (Sep 18, 2008 2:16:37 PM)
I have three topics of trademark questions. Shall I start with each topic.
USPTO Expert3 (Sep 18, 2008 2:17:10 PM)
Yes – please send your question in separately. KEJ – Do I need to hire an attorney
USPTO Expert2 (Sep 18, 2008 2:17:47 PM)
KEJ - There are no requirements that you must use a registered patent attorney or agent. However the process of securing a patent can be complicated and the Office strongly suggests using the services of a registered patent attorney or agent. A listing is available at: http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
PET (Sep 18, 2008 2:18:23 PM)
Does the Patent Office have a step–by–step quick reference to guide you through the patent process from provisional to acceptance?
USPTO Expert (Sep 18, 2008 2:19:19 PM)
PET - We do not have a step by step guide but we do have information on our FAQ http://www.uspto.gov/web/offices/pac/doc/general/index.html. The requirements for a provisional application are a provisional application cover sheet, PTO/SB/16, a written description that complies with 35 USC 112 first paragraph, drawings if necessary for the understanding and the current fee (which can be found at http://www.uspto.gov/web/offices/pac/provapp.htm and you can call our Inventors Assistance Center at 1-800-786-9199.)
anonimol (Sep 18, 2008 2:19:30 PM)
Hello and thank you for this opportunity! In my provisional application I’ve sent claims. –can I change those claims in my non–provisional
application?(the same stuff,but put in different way…) –Can I add new claim?(my provisional was about one method of attaching sth to someting,I want to add new method beside that one) I found on the uspto website text: “The later–filed non–provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention. See 35 U.S.C. § 112, 2nd paragraph” Does it mean that in my non–provisional I have to include at least one claim from my provisional,but I can add some more claims? Or will I loose my benefit from the provisional application filing date? (I want to add a claim with new method for attaching the same thing as in my provisonal ) Thank you!
USPTO Expert2 (Sep 18, 2008 2:22:35 PM)
(EDITED ANSWER)
Anonimol – Yes, you may include additional subject matter in your non-provisional application. However, your non–provisional application will only be entitled to the benefit of the filing date of the provisional application for subject matter that has support in the provisional application. In your particular example, if your provisional application discloses one method and you want to add a new method in your non-provisional application, that new method will not be entitled to the benefit of the filing date of the provisional application since that new method was not disclosed in the provisional application. That new method will only be entitled to the filing date of the non-provisional application.
the angry chef (Sep 18, 2008 2:22:49 PM)
If a trademark is already taken –can you use it if you alter it?
USPTO Expert3 (Sep 18, 2008 2:22:51 PM)
The Angry Chef – Trademarks must be different enough so that people encountering them at different times and in different places would not think that the goods or services are coming from the same source. We cannot give you specifics –each case is decided on its own merits. You must make that determination yourself keeping in mind the above general information.
perk814 (Sep 18, 2008 2:23:35 PM)
Do you need a proto type for your invention before getting a patent?
USPTO Expert (Sep 18, 2008 2:23:51 PM)
Unless requested by the examiner, it is not necessary to provide a model of your invention or the actual product. Your specification and drawings must sufficiently describe your invention.
Elaine (Sep 18, 2008 2:25:09 PM)
Canceled claims do not count toward the total number of claims when considering fees, right? Would withdrawn claims be counted when deciding if the total number of claims exceeds 20?
USPTO Expert2 (Sep 18, 2008 2:25:52 PM)
(EDITED ANSWER)
Elaine - Canceled claims do not count for determining fees, withdrawn claims do.
Mom (Sep 18, 2008 2:26:07 PM)
How do I know if the name for a trademark application is distinct or diferent enough to get the mark? For example, what if I wanted to trademark “Medical Magazine” – – would it be distinct enough? What if Iv’e been using it in commerce (putting out a publication) but have woreded it “Virginia Medical Magazine” , then two year later I started another magazine titled “Kentucky Magazine” (both magazines published at the same time but put out in different states). OK, and then, two years later, I change both titles to “Medical Magazine” and distributed in both states with inserts specific to each state? Can I get a trademark for “Medical Magazine” – – is it going to be distinct too?
USPTO Expert3(Sep 18, 2008 2:26:18 PM)
Mom – We cannot give you specific advice but the more a phrase clearly describes to the public the nature of the goods or services – what it does, who it is directed to, physical attributes of the goods – the more it would not be considered distinctive for registration as a trademark. The form of a publication and its subject matter could be a problem to get through to registration.
bakery-gal(Sep 18, 2008 2:29:52 PM)
I have a brilliant weight-loss Centers idea, but need to find venture capitalist, or how to write proposals?
USPTO Expert(Sep 18, 2008 2:30:55 PM)
Bakery-gal – The Office does not assist with locating venture capitalist, however you might want to contact your local Small Business Development Center (SBDC) via the Small Business Admininstration, www.sba.gov
carr (Sep 18, 2008 2:31:07 PM)
There is a dead trademark that I found in the TARR system. It has been abandoned since Aug 2002. There was no statement of use filed after Notice of Allwance was issued. Can I take ownership if it is available?
Mom(Sep 18, 2008 2:31:22 PM)
What if I search TESS adn found that the trademark that I wanted in the class that I want is “dead”. Can I now apply for that mark in the same class if I am using mine in commerce“ Can teh owner fo teh dead mark come after me”
USPTO Expert3(Sep 18, 2008 2:31:25 PM)
Mom & Carr – Just because a registered mark is abandoned doesn’t necessarily mean that it is not still being used by the person who registered it. The records of the USPTO indicate the status of the registration, not the marketplace use of a mark. Therefore, you should do further research to determine if your “taking” this mark could be a problem because there’s still a valid user in the marketplace.
lxuser(Sep 18, 2008 2:32:24 PM)
i have a new york state class 041 servicemark for my musical band (“used in connection with musical performance and/or recordings”)... when choosing the assignment of a federal servicemark, does a state servicemark count as a "foriegn registration exists for same goods or services", ie Section 44(e)
USPTO Expert3(Sep 18, 2008 2:33:17 PM)
lxuser – a state registration cannot be considered a foreign registration under Section 44(e). Only registrations from countries other than the United States that are members of the Paris Convention can claim the provisions of Section 44(e) based on their registration in their home country.
Katie(Sep 18, 2008 2:33:23 PM)
Sorry if you already answered this (the chat window closed on me)… What is the best way for an independent inventor to get started and are there any legitate web sites/companies that can help (other than USPTO)?
USPTO Expert2 (Sep 18, 2008 2:33:35 PM)
Katie - While we can not recommend any private company to assist you with your new idea, the USPTO web site is a good source for the beginning inventor. Also you can visit any of the Patent and Trademark Depository Librarys and get some useful information. Finally, there are local independent inventors organizations that may assist you.
Zeke (Sep 18, 2008 2:33:47 PM)
I have a gameboard design I want to patent. Do I need to have an actual prototype made to get one, or can I send a detailed description?
USPTO Expert3 (Sep 18, 2008 2:34:55 PM)
Zeke - Hi Zeke. If you want to protect the way a game is played, then you should apply for a utility patent. If, however, you want to patent the way the gameboard looks, then you should apply for a design patent. Utility patents protect how things work, while design patents protect the way things look - their ornamental appearance. We have a lot of detailed information and examples on our website under "A Guide to Filing a Utility Patent Application" and "A Guide to Filing A Design Patent Application."
Chrissy(Sep 18, 2008 2:35:48 PM)
Could I claim "small entity" status if I license the patent rights to a big company?
USPTO Expert (Sep 18, 2008 2:37:26 PM)
Chrissy - If you have licensed your invention to a large company, you will not be able to claim small entity status. A company whose number of employees exceeds 500 is considered a large entity. See 37 CFR 1.27 which provides a definition for small entities. http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_27.htm
USPTO Expert2 (Sep 18, 2008 2:35:57 PM)
You should go to your local Patent and Trademark Depository Library. The personnel there can lead you to resources that can help you understand the language used in patents as well as patent attorneys and agents who can assist you. The URL for the libraries is http://www.uspto.gov//web/offices/ac/ido/ptdl/index.html
USPTO Expert2 (Sep 18, 2008 2:38:05 PM)
Progressive labs - please see above for response.
BratLisa (Sep 18, 2008 2:38:33 PM)
I have an idea to make a piece of jewelry and also a name to call it. Do I patent the design and the name of the idea. Or do I have to trademark the name of it?
USPTO Expert3 (Sep 18, 2008 2:38:34 PM)
Hi bratlisa. The piece of jewelry would be eligible for a design patent for its appearance. The name of the jewelry may be eligible for a trademark but not a patent.
Mom(Sep 18, 2008 2:38:43 PM)
But if I am using and have been using "Medical Magazine" and can show distribution to 200,000 subscribers, wouldn't that show that many know my magazine by "Medical Magazine"?
USPTO Expert3(Sep 18, 2008 2:39:18 PM)
Mom - that is one element that will be considered in a determination as to whether the name of the magazine has become distinctive and is eligible for registration under Section 2(f) of the Trademark Act.
TheEnd (Sep 18, 2008 2:39:45 PM)
Hello USPTO Experts What is the difference between a "TEAS Plus Form" and a regualr Tradmark Form?
USPTO Expert3(Sep 18, 2008 2:41:41 PM)
TheEnd - The TEAS Plus form requires more information to be given by the applicant in the initial application. It also requires that the applicant be willing to communicate with the USPTO via email and the identification of goods or services be taken directly from the Acceptable Identification of Goods and Services Manual that is available online and is integrated into the Teas Plus application process. It is also less expensive than the other forms of trademark application. A TEAS or written application require less information up front but the same information will eventually be required in the course of the prosecution of the application. The purpose of the TEAS Plus sytem is to make the process more efficient for both the Office and the applicant.
Mihir (Sep 18, 2008 2:41:45 PM)
What type of patent should I file to secure an idea for creating an online system that based on the internet? What information do I need? Do I need the actual system running or just the description of it is enough?
USPTO Expert (Sep 18, 2008 2:41:56 PM) (EDITED ANSWER)
Applications directed at online (internet based) transactions are known as Business Method applications. You do not physically need to have a system that is "up and running", however you will need a complete description of the entire process. The process steps must be set forth in enough detail that one skilled in the art would know how to "program" the computer. A block diagram flowchart is a good way to set forth the process, with a full description of each block (computer module). Remember that computer programs themselves are not patent eligible subject matter. The programs must be set forth on a computer readable medium that when executed on a computer causes the process to be performed. A system type claim must also have sufficient hardware set forth.
tmquestions (Sep 18, 2008 2:42:32 PM)
what trademarks are needed for a childrens book? the title or characters?
USPTO Expert3(Sep 18, 2008 2:44:17 PM)
tmquestions - The title of a single work such as a book cannot be registered as a trademark. The title of a series of books can be registered. Similarly, the name of a character in a book cannot be registered as a trademark unless it is used as a trademark to identify specific goods or services. Think of the image of a super hero that often appears in a small , set-off formate on the cover of a comic book. That could be considered a character functioning as a trademark.
jason(Sep 18, 2008 2:44:24 PM)
I have dealt with a number of patent examiners and for the most part I have been pleased with them, however I am presently dealing with one examiner in particular with whom I am having a very difficult time communicating through both writing and verbal means. This case (in one form or another) has been going on since 2000 (to my great expense) and I find the communication issue a major reason for this lengthy prosecution - I am wondering what, if anything, can be done if the examiner on a case appears to be sub-standard?
USPTO Expert(Sep 18, 2008 2:46:29 PM)
Jason - anytime you are not satisfied with the examiners response, you can contact his/her Supervisor
Nick Leggett(Sep 18, 2008 2:46:32 PM)
Is there a bus connection for the public from the Metro rail station to the Patent Office building?
USPTO Expert (Sep 18, 2008 2:48:04 PM)
Nick - The Metro Station is about 300 yards from our campus, if you have a particular disability contact the metro system, www.wmata.com
Gemstone (Sep 18, 2008 2:48:07 PM)
I wish to trademark a cute saying akin to "LIFE IS GOOD" uh hem, but much catchier. I want to put it on children's materials, ie. blankets, t-shirts, cups, etc. Can one actually trademark a "saying" like "You're fired," or "That's hot?". Assuming I can, what are the key parameters I should be aware of, and if possible, what's the next step to getting it out there aside from obvious internet blogging? Thank you!
USPTO Expert3 (Sep 18, 2008 2:48:08 PM)
Gemstone - A slogan may be registered as a trademark if it is used as a trademark and does not have a connection with the goods or services on which it is being used. For example "MERRY CHRISTMAS" used to identify greeting cards would be a problem because there is a connection between the common use of the phrase and the goods.
tmquestions(Sep 18, 2008 2:52:13 PM)
Can two trademarks exist if the word or brand trademarked are used in two completely different industries? (For example, could Coke be the name of an animal character in a childrens book (completely different use than Coke, the drink??)
USPTO Expert3 (Sep 18, 2008 2:52:15 PM)
tmquestions - the goods or services must be adequately different to avoid confusion in the marketplace when consumers encounter them in different locations or at different times. Also be careful of the famous mark doctrine that gives famous trademarks (as determined by court actions a very broad scope of protection. )
The wolf – How should I submit my provisional application and what are the requirements?
USPTO Expert (Sep 18, 2008 2:54:51 PM)
The wolf - You can submit your application via express mail, please see 37 CFR 1.10 for information or priority mail or you can file on-line, www.uspto.gov. The requirements for a provisional application are a provisional application cover sheet, PTO/SB/16, a written description that complies with 35 USC 112 first paragraph, drawings if necessary for the understanding and the current fee (which can be found at http://www.uspto.gov/web/offices/pac/provapp.htm
USPTO Expert2(Sep 18, 2008 2:54:55 PM)
Pet - please resubmit your question.
Elaine (Sep 18, 2008 2:55:02 PM)
Can withdrawn claims be canceled?
USPTO Expert2 (Sep 18, 2008 2:55:34 PM)
Elaine - Yes.
Gwen (Sep 18, 2008 2:56:17 PM)
If I register my company name as a trademark, then do I have to register each peice of my artwork as well or will my trademarked name cover my art?
USPTO Expert3 (Sep 18, 2008 2:56:21 PM)
Gwen - each word or design that you wish to register as a trademark must be the subject of separate trademark registrations if you wish to have protection under the Trademark Act for each of them. If words and designs are used together as a trademark for your goods or services, they may be presented in a single application but the combination must be viewed by consumers as a single mark or source identifier.
needmoney (Sep 18, 2008 2:56:58 PM)
is there a free site to search international patents? what about a free site to search articles (not patents) in foreign countris -- do I need a translator?
USPTO Expert (Sep 18, 2008 2:57:40 PM)
needmoney - You can go to a local Patent and Trademark Depository Library http://www.uspto.gov/go/ptdl/ and conduct a free search or EPO's esp@cenet. Nancyn-why isn’t my question being answered?
USPTO Expert (Sep 18, 2008 2:58:39 PM)
Nancyn - We always receive many more questions than we can answer and we try to select the questions that appeal to the broadest answer.
lxuser (Sep 18, 2008 2:59:55 PM)
if you are the first to file and first to use a registyered servicemark, is it necessary to enforce it through legal means, and/or contact with an infringing party. for instance if i have a servicemark and someone else markets themselves using my servicemark and gains a strong recognition because i was unaware of their use of it... does that mean my servicemark doesnt give me the right of a cease and desist on an infringing party because they have made a stronger use of it?
USPTO Expert3(Sep 18, 2008 3:00:13 PM)
lxuser - The Office cannot determine the relative rights of parties. However, if you have a federal registration you can possibly bring an action against a party you perceive as infringing on your mark. The trier of fact (court or the Trademark Trial and Appeal Board) will determine the rights of the parties based on trademark law - not who is bigger or made more use.
needmoney (Sep 18, 2008 3:01:19 PM)
The USPTO used to put out a brochure called "Stop Fakes" however, I can't seem to find it anymore. Do you know how I can get a hard copy of "Stop Fakes"?
USPTO Expert (Sep 18, 2008 3:01:22 PM)
needmoney - the brochure is online and downloadable as a PDF, see http://www.uspto.gov/smallbusiness/
patticake (Sep 18, 2008 3:03:55 PM)
hello my question is - I am looking at making a medical supply product and also another product that works with that one but also with others- do I need to have two application for provisional??
USPTO Expert2 (Sep 18, 2008 3:05:34 PM) (EDITED ANSWER)
Patticake - You may file a provisional application for each of those products or you may file a single provisional application for both of those products.
ant84 (Sep 18, 2008 3:05:43 PM)
Is it required by law to do a 'search' before a patent is taken place or can i take my chances?
USPTO Expert (Sep 18, 2008 3:05:55 PM)
ant84 - There is no requirement that you conduct a search, however it is in your best interest to determine whether a prior patent to your invention already exists. You may conduct a patent search via our web site or at your local Patent and Trademark Depository Library.
Nick Leggett(Sep 18, 2008 3:05:59 PM)
What is the age of the youngest known inventor? The age of the oldest known inventor?
USPTO Expert(Sep 18, 2008 3:08:39 PM)
Nick - It is a good question, however the Office does not require the age of inventors, you may want to contact the local Patent and Trademark Depository Library and see if they can assist with this research.
PET (Sep 18, 2008 3:08:41 PM)
My previous unanswered question had to do with preparing drawings for a patent application. Is there a style guide for these drawings or can the drawing be done in any fashion as long as it is understandable? Also, can annotated pictures be used instead of drawings or in combination with drawings?
USPTO Expert2 (Sep 18, 2008 3:08:49 PM)
Pet - There are certain guidelines for patent drawings that differ based on whether the application is for a utility patent or a design patent. These rules are found in 37 CFR 1.84 (utility) and 37 CFR 1.152 (designs). Design patent drawings requirements are more restrictive, since the drawings are the claim. Basically, ink drawings are usually required, but photographs will be accepted in some circumstances, like when a photograph is the only way to convey a particular aspect of an invention’s appearance. Whether the application is for a utility or design patent or a trademark, the details in the drawings are critical.
lxuser (Sep 18, 2008 3:08:52 PM)
is there a limit on how far back you have used a mark in commerce? for instance i have been using a mark since 2000 but im only registering it as of the current date 2008?
USPTO Expert3 (Sep 18, 2008 3:08:57 PM)
lxuser - there is no limit as to how far back your use can be. Also, in response to an earlier question of yours concerning whether you will get a "hard copy" (we call it a registration certificate) if you file using TEAS Plus process, the answer is that you will.
sam (Sep 18, 2008 3:09:04 PM)
When is the next time you will be conducting a similar online chat - help offer?
USPTO Expert (Sep 18, 2008 3:09:22 PM)
Sam - we conduct our chat every other month and it is always posted on our homepage, www.uspto.gov
sweetleif (Sep 18, 2008 3:10:09 PM)
Must a musical group's name be trademarked?
USPTO Expert3(Sep 18, 2008 3:11:15 PM)
Sweetleif - there is no requirement to register a musical group's name - we assume that's what you mean by "trademarked." It is a business decision for you to make, but it is not a requirement.
YKIKI1 (Sep 18, 2008 3:11:37 PM)
I recently submitted a question via DigiChat, if for some reason my question isn't selected to be answered during this online chat session is there someplace else that I can receive an answer to my question?
USPTO Expert (Sep 18, 2008 3:12:13 PM)
YKIKI1 - Yes you can submit your question to independentinventor.gov or contact our Inventors Assistance Center at 1-800-786-9199.
ant84 (Sep 18, 2008 3:13:16 PM)
What if my idea is worth 'ALOT' of money. Like billions. Do i have to be worried about my lawyer stealing it and selling it away even though we signed a Confidentiality Agreement?
USPTO Expert (Sep 18, 2008 3:15:41 PM)
Ant84 - Attorney and agents are registered to practice before the Office and subject to our rules of ethics. Taking client property would be considered unethical behavior and could result in sanctions from the USPTO. If you have a problem with your attorney you can report him/her to the Office of Enrollment and Discipline here at USPTO. Also attorneys are subject to the ethics rules for their state bars as well.
lxuser (Sep 18, 2008 3:16:22 PM)
is it required to prove that you have used a mark outside of your resident state to be approved for a federal trademark?
USPTO Expert3 (Sep 18, 2008 3:17:30 PM)
lxuser - it is required that the mark be used across state lines in order for the USPTO to have the jurisdiction to give you a registration. However, the USPTO does not require proof - your statement that the mark is used in interstate commerce is enough for the application process. But that is an area that another use may challenge so you should have proof of that use.
USPTO Expert2 (Sep 18, 2008 3:17:32 PM)
Thank you for joining us today, as usual we receive more questions than we can answer, and only the questions that were posted today receive answers. If you did not see your question, please visit our FAQs from previous chats, http://www.uspto.gov/web/offices/com/iip/transcripts.htm or contact our Inventors Assistance Center at 1-800-786-9199. Our transcripts should be posted in about two weeks on the homepage. We especially want to recognize the large volume of trademark questions that we received today. Our next chat will be in November, have a good afternoon.
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